Jake Linford

Document Type

Article

Publication Date

2015

Publication Title

Ohio State Law Journal

Publication Title (Abbreviation)

Ohio St. L.J.

Volume

76

Issue

6

First Page

1367

Last Page

1421

Abstract

Classifying a trademark as descriptive rather than suggestive fundamentally alters the scope of trademark protection. A descriptive mark, derived from a feature of the product or service sold, only qualifies for protection after the mark has acquired source significance, i.e., consumers see it as a trademark. A suggestive trademark, which indirectly invokes qualities of the product or service, is protected without evidence of source significance. Courts often struggle to distinguish between suggestive and descriptive marks. The effort would nevertheless be reasonable if the differences between suggestive and descriptive marks justified their disparate legal treatment. But in light of cognitive and historical research into language change, protecting a suggestive mark without evidence of source significance may not be warranted.

In fact, trademark law erroneously inflates the difference between suggestive and descriptive marks. This mistake becomes apparent in light of theoretical, historical, and cognitive research into “semantic shift”: the process by which words gain and lose meaning over time. Linguistic analysis reveals an inconsistency between how trademark doctrine treats suggestive and descriptive trademarks and how consumers likely process them. Suggestive and descriptive marks are not so dissimilar as to justify different treatment. Instead, they likely influence consumers in similar ways. As a result, trademark law should reposition the line between descriptive and suggestive trademarks. A suggestive mark, like a descriptive mark, should be protected only upon a showing that the mark has developed source significance in the minds of consumers.

Rights

© 2015 Jake Linford

Comments

First published in Ohio State Law Journal.

Faculty Biography

http://www.law.fsu.edu/our-faculty/profiles/linford

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