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Trademark owner as adverse possessor: productive use and property acquisition.

There is an ongoing debate over whether or not a trademark is "property," and what the appropriate boundaries of such a property right might be. Some scholars assert that rules and justifications developed to handle rights in real property are generally a poor fit for intellectual property regimes and for trademark protection in particular. Others respond that a unified theory of property should be able to account for both real and intellectual property. Neither approach fully recognizes that property regimes are multifaceted. A close look at the critical features of particular regimes can pay unexpected dividends.

This Article reveals how the process of trademkrk acquisition resembles, in startling ways, acquiring title to real property through adverse possession. Both the trademark and adverse possession regimes base acquisition on the productive use of the property in question. This productive use must be sufficient to provide notice of the asserted property right to the public and competing claimants. A properly functioning productive use regime is valuable because such a regime is more likely to encourage an efficient initial allocation of property rights while also providing fairness-based limits on the scope of property rights. Recognizing the productive use structure in both regimes provides several significant insights. First, the productive use structure highlights the importance of the commercial strength inquiry as a use-based limitation on the scope of protection even for inherently distinctive marks. Second, the productive use structure also clarifies how and why rights in the trademark commons are more active and property-like than rights held in common over expired patents and copyrights. Third, comparing the regimes shows how adverse possession is, surprisingly, a more hard-edged or "crystalline" property regime than the relatively "muddy" trademark regime. Finally, this analysis inspires interventions for trademark and adverse possession law to bring them more in line with the productive use requirement, and to open space for public use and competition.
CONTENTS

INTRODUCTION

I. THE NOTICE FUNCTION OF PRODUCTIVE USE

 A. The Basics of Adverse Possession and Trademark Acquisition

 B. The Notice Function of Open and Notorious Possession

 C. The Notice Functions of Fencing, Color of Title, and
Trademark Registration

 D. Continuous Use and Acquiring Distinctiveness

II. PRODUCTIVE USE AND TRADEMARK SCOPE

 A. Productive Use and Inherently Distinctive Marks

 B. Claims of Right and the Hostility Misnomer

 C. Exclusivity and Trademark Property

III. TRADEMARK EXPIRATION AND COLLECTIVE PRODUCTIVE USE

IV. PRODUCTIVE USE AND TRADEMARK UNCERTAINTY

 A. Adverse Possession and Public Property

 B. Physical v. Intangible Property

 C. Warehousing and the Domain Name System

 D. Mud and Crystals in Property Acquisition Regimes

V. INTERVENTIONS

 A. Descriptive Marks, Risk, and Reward

 B. Crystallizing Trademark Timelines

 C. Adverse Possession: Productive Use over Bad Faith

CONCLUSION


INTRODUCTION

In longstanding tradition, American courts have analogized trademark protection to property rights developed at common law. (1) The question of whether they should do so has recently preoccupied the legal academy, (2) part of a larger debate about whether it is proper to view intellectual property through a real property lens and whether comparing intellectual property regimes to real property regimes gets us anywhere. Mark Lemley has led the charge in arguing that intellectual property is sui generis, with unique characteristics that make it unnecessary to "turn to some broader area of legal theory to seek legitimacy." (3) Under this sui generis framework, it is useless to apply "inapposite economic analysis borrowed from the very different case of land" to intellectual property. (4) Scholars like John Duff, by contrast, argue that identifying a "unified theory of property one broad enough to account for the similarities and differences among species of property as diverse as Blackacre and patents promises to increase rather than to diminish our understanding of property and intellectual property." (5) Neither approach explicitly recognizes that real property regimes are multifaceted. Valuable results are more likely when we compare the "right" real property regime to the "right" intellectual property regime when the regimes compared share not only similar structures but similar policy justifications.

For example, one of the problems in analogizing trademark acquisition to rights in real property is that trademark acquisition, as it developed in the common law, is not a pure first-in-time regime. Instead, acquiring a trademark requires productive use of a given word, symbol, or other identifier as a trademark a source signifier. Such use is generally not necessary to acquire rights in real property, with at least one important exception: adverse possession is also a regime with a productive use requirement. (6) As this Article argues, the parallels between acquiring real property through adverse possession and acquiring rights to the exclusive use of trademarks are substantial and instructive: both doctrinal regimes manifest a purpose to provide notice to the public and competing claimants through productive use. This productive use is in turn notice providing, (7) meaning generating, (8) boundary setting, (9) abuse limiting, (10) and value creating. (11)

A productive use requirement is desirable in both regimes for three interlocking reasons. First, requiring productive use makes it more likely that the initial allotment of property rights is more efficient than other potential allocations. (12) Second, productive use provides a fairness-based limitation on the scope of property rights, making sure both that the initial possessor has done something to merit the property right and allowing for necessary reallocation when the productive use of a subsequent claimant outstrips the productive use of the initial claimant. (13) Third, productive use regimes are communicative and information forcing, delineating the boundaries of the property right at issue. Property seekers, competing claimants, and the public all receive notice from and provide notice to one another in regimes that require productive use. (14)

Part I of this Article discusses the main similarities between the trademark and adverse possession regimes. Part I.D explains how the acquisition of rights in descriptive marks most clearly resembles adverse possession. Part II.A explains how the rights in inherently distinctive marks are also dependent on productive use. Part II.B clears up the hostility misnomer that has crept into claim of right analysis in adverse possession doctrine, while Part II.C explains how the comparison to adverse possession's exclusivity requirement helps circumscribe the rights acquired by the trademark owner. Part III discusses the role played by productive public use in the creation and expiration of trademark rights. Part IV focuses on several critical differences between the regimes to highlight how adverse possession is, surprisingly, a more hard-edged or "crystalline" property regime in the sense first used by Carol Rose (15)--than the relatively "muddy" trademark regime. Recognizing the central importance of productive use highlights how both regimes have gone strayed from their productive use foundations. Part V recommends interventions to bring them back in line.

I. THE NOTICE FUNCTION OF PRODUCTIVE USE

Adverse possession and the law protecting trademarks are property regimes that are more similar than one might at first imagine. At their core, trademark law and adverse possession are both communicative regimes, but that communication with the public, competitors, and other potential claimants is carried out via productive use of the property at issue. Bringing the property to productive use is valuable because the use itself provides an indication of the boundaries of the property, and simultaneously requires some evidence that the claimant has acted openly, as an owner should.

For example, the adverse possessor who operates under color of title or puts a fence around the property provides information about how she values the property and indicates that she has gone to some length in signaling that interest to the record owner and other competitors for the property. Initial steps like fencing lead to a transfer of title, however, only when the adverse possessor also engages in continuous and exclusive use over time. (16) She must act like an owner, and persistently doing so leads the public to treat her like one. Adverse possession is also information forcing. (17) By entering the property and subjecting it to use, the adverse possessor puts the record owner on notice that there are competing claims to the property, and the record owner should step in to clarify the boundaries of the property, or risk losing her claim.

Like adverse possession, trademark use is also communicative and information forcing. Consumers come to understand the scope of the mark owner's claim as the mark is used in commerce to designate goods and services from a consistent source. Competitors are also notified of the trademark owner's claim through her productive use. (18)

This Part describes these similarities in more detail. Part I.A briefly describes the trademark and adverse possession regimes. Part I.B compares aspects of the trademark and adverse possession regimes that require actual, open, and notorious possession from the respective claimants and summarizes the traditional justifications for trademark ownership and adverse possession in light of the productive use requirement. Part I.C describes how trademark registration acts like color of title or fencing the property incentivizing activity that enhances notice to the public without stripping the productive use requirement. Part I.D analyzes in detail the similarities between the continuous use requirement in adverse possession and the acquired distinctiveness requirement in trademark law.

A. The Basics of Adverse Possession and Trademark Acquisition

As a matter of black letter law, there are five elements of a successful adverse possession claim, and each element manifests an aspect of the notice function of productive use. First, there must be actual entry. (19) The adverse possessor can generally claim only so much land as was possessed and converted to use. (20) Second, the use must be notorious something the reasonably attentive landowner would notice if she were paying attention. (21) Third, the adverse possessor must engage in exclusive possession of the property. (22) Fourth, that possession must be under claim of right, or in other words, without permission. (23) Fifth and finally, each state prescribes by statute the amount of time for which-the adverse possessor must continuously possess the property, without ejectment, in order to secure title. (24) If the adverse possessor successfully engages in exclusive use of the property for the statutory period, she can quiet title, or in the alternative, prevail against an action for ejectment by the title owner. (25)

Trademark acquisition also hinges on notice-providing productive use. The right to use a trademark exclusively is obtained, under the U.S. system, but not through mere initial adoption (26) Instead, the trademark owner establishes her rights through the use of a given word or symbol to designate a source for goods or services. (27) This productive use infuses the mark with communicative value. (28)

Trademarks are often grouped into categories, based on the initial suitability of the word or symbol chosen for trademark protection. Some words are seen as inherently distinctive inherently capable of carrying trademark meaning because the word chosen is not directly related to the product or service offered for sale. For inherently distinctive marks like XEROX, a fanciful mark for photocopiers, APPLE, an arbitrary mark for computers, and GLEEM, a suggestive mark for toothpaste federal trademark protection is granted automatically upon "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." (29)

Other words are more descriptive of the product. For these descriptive terms, initial use of a descriptive mark like SEALTIGHT for self-sealing fasteners secures no priority over other users of identical or similar marks until the descriptive term acquires distinctiveness. (30) Descriptive terms do not initially signal source, so significance to consumers, "secondary meaning" or "acquired distinctiveness," must be developed2' For example, a term like TASTY for apples describes a characteristic of the goods sold, and is thus merely descriptive and unprotectable until the TASTY mark acquires secondary meaning, that is, until consumers come to interpret the mark as a designation of the source of the apples sold under the mark. (32)

Productive use of a descriptive mark builds secondary meaning, but productive use is required to develop commercial strength in any mark. (33) Thus, even an inherently distinctive mark must be consistently and continually used in commerce or the mark may be deemed effectively unenforceable, if not outright abandoned. (34) A failure to use the mark in commerce will result in the mark falling into the public domain for subsequent appropriation by another for trademark use. (35)

Some terms can never be protected as trademarks. A term that a court concludes is ex ante generic for the genus of goods or services, like COMPUTER for computers, may never be transformed into a trademark, even if consumers should come to associate the generic terms with a particular good or service from a particular source, (36)

A trademark owner may successfully enjoin the use of the mark by a junior user, where the owner can establish the new use is likely to confuse consumers. Injunctive relief is common; damages are less so. (37) And while use in commerce is the means to acquire rights in a trademark, the scope of what is protected is determined only in comparison to the use engaged in by others. The scope of protection is often fully defined only in litigating the question of likelihood of confusion, where courts apply a "muddy" multifactor test. (38)

There are three key commonalities in the trademark acquisition and adverse possession regimes. First, both regimes require the acquiring property owner to engage in productive use of the property at issue. Second, in both regimes, that productive use fulfills a notice function that informs record owners, competitors, and the public about the scope of the asserted claim. Third, both regimes are concerned with the relative or comparative value of asserted rights. While trademark acquisition looks like a first-in-time property regime, the mark owner must establish rights against other comers via use in commerce. (39) Being first to adopt a mark is not enough. (40) With the exception of fanciful marks, every trademark is drawn from words or symbols with preexistent meaning, to which the public and competitors have varying claims. (41) And while adverse possession is a means of property reallocation, there are important similarities between the requirements an adverse possessor must meet to acquire property from a title owner and the productive labor that justifies property ownership (42) Like the trademark owner, the adverse possessor must signal her claim not only to the title owner, but to the entire world. (43)

The similarities between the adverse possession and trademark acquisition regimes are most apparent when comparing adverse possession's requirements of actual entry, open and notorious possession, and continuous use with similar requirements in trademark law. As developed in the next two subparts, these similarities highlight how both regimes base the acquisition of property rights on productive use that communicates the property claim to the public and potential competitors.

B. The Notice Function of Open and Notorious Possession

In order to claim real property through adverse possession, there must be actual entry, that is to say, "the possessor must physically occupy the premises in some mariner. (44) Adverse possession must not only be actual, but also open and notorious. Such use provides notice to the record owner sufficient to ascertain whether she values the property as much as the possessor does. (45) Failing to notice open and notorious adverse possession is a signal that the record owner holds the property in somewhat lower esteem than the possessor, or at least that her need for it is less immediate. Generally, courts look to the typical use to which property of that type is put. [46] Where the adverse possessor occupies part of a pre-existing parcel, she will generally prevail in claiming title only to the part of the parcel where productive use takes place. (47)

Adverse possession of real property is typically justified on one of three interlocking grounds: settling claims, (48) the demerit of the title owner, (49) and the merit of the adverse possessor. (50) While the claim-settling justification operates like a statute of limitations to bring finality to property disputes, the demerit and merit rationales seek to justify the actual transfer of title from the record owner to the adverse possessor. The merit rationale has historically been seen as the weakest of the three justifications for adverse possession, (51) but recognizing the notice function of productive use at the core of adverse possession reaffirms the importance of the merit rationale.

The English common law discounted the merit of the adverse possessor, (52) but it cannot be the case that the demerit of the property owner is sufficient justification for the transfer of title. If the law merely sought to dispossess inattentive record owners, an abandonment regime would work just as well. (53) Such a regime could properly consider the evidence that the record owner failed to secure the property or otherwise put it to reasonably productive use in the community.

Where the demerit of the record owner was significant, the property would fall back to the public domain to be claimed again via auction, capture, or some other possessory act. An auction of this sort can be wasteful, however, as potential claimants hoping to win the race will be willing to expend resources up to their best estimation of the value of the property, resulting in a total expenditure of resources greater than the value of the property in the hands of any potential victorious claimant. (54) Adverse possession avoids the inefficient race to claim the abandoned property by weighing the record owner's demerit against the possessor's merit and making the transfer only where the relative weight justifies the shift.

The requirements that possession be actual, open, and continuous are arguably grounded in the desire to provide the record owner with sufficient notice of the threat to her property right. Thus, only the truly disinterested or inattentive property owner loses title, which helps the public discern which record owners might "demerit" or deserve to lose the property. (55) The merit rationale has been seen alternately as grounded in the psychological attachment of the adverse possessor to the property, (56) or in the labor performed in exercising exclusive control over the property, (57) but neither version of the attachment or labor the rationale fully realize the social value provided by the adverse possessor.

While the adverse possession factors are traditionally understood to inquire whether the adverse possessor provides a sufficiently clear signal about her claim to the inattentive record owner, successful adverse possession also provides an important signal to the public. Carol Rose argues that possession is communicative, a "statement" providing "notice to the world through a clear act." (58) Thus, some of the value of adverse possession stems from its ability to communicate a claim of right to the public. Proper or "suitable" use the type of use typical of an owner provides notice to the public that the user wishes to interact with society as an owner. (59) Rose posits that the transfer of property is justified on notice grounds when the record owner fails to eject or locate the adverse possessor. The record owner "fails to correct misleading appearances" while the adverse possessor "speaks loudly and clearly." (60) The information-forcing role played by the adverse possessor can lower transaction costs because it allows the public to "rely upon their own reasonable perceptions. (61)

Eduardo Pefialver and Sonia Katyal suggest that adverse possession is justified precisely because the adverse possessor's willingness to possess the property, in the face of possible dispossession before the end of the statutory period as well as criminal and civil sanctions for trespass signals that she highly values the property. (62) On the other hand, the record owner's failure to take action against the adverse possessor within the statutory period signals the low value she places on the property. (63)

Thus, adverse possession signals the comparative value that record owner and adverse possessor place on the property. Because the record owner has some trappings of notice, the record owner retains title merely by policing her boundaries and challenging encroachers. This is sufficient to send a clear signal of the property's value. The adverse possessor must do more, engaging in some level of perceptible productive use not required by a record owner. This use signals to the public not only that the adverse possessor values the property, but that society should value the use to which the adverse possessor puts the property, or in the alternative, value the adverse possessor as a transaction party with regard to said property.

The productive use requirement in trademark law serves similar functions, and stems from similar policy concerns. Consistent with the common law origins of trademark protection, trademark rights can be secured without any registration whatsoever and enforced as a matter of federal law. (64) The productive use of the trademark in commerce defines the scope of the mark owner's property right and provides a notice function similar to that provided by open and notorious use requirement in adverse possession. (65) As Judge Easterbrook noted in the case of Zazu Designs v. L'Oreal, S.A., "Only active use allows consumers to associate a mark with particular goods and notifies other firms that the mark is so associated." (66) The obligation to use the mark in commerce is, in part, a requirement that the trademark owner's attempted possession occur with sufficient visibility to put both potential competitors and the public on notice. Goods need not be offered for sale initially, so long as analogous use, like pre-sales publicity, is open and notorious, (67) that is, sufficient to "popularize [the mark] in the public mind," (68) and followed by bona fide use. (69) Thus, a mark owner's property right is recognized only when she can establish use sufficient to secure secondary meaning or commercial strength. Without such a showing, she cannot enforce her rights against an alleged infringing user.

The dominant justification for trademark rights has been an economic rationale: trademark protection is arguably designed to reduce consumer search costs and provide an incentive to the mark owner to provide goods and services of consistent quality, by allowing the mark owner to protect the mark as a unique signifier of that quality. (70) In addition to lowering search costs, trademark protection serves a correlative function of protecting the public from deceit or fraud by providing a remedy against confusing misappropriation of trademarks. (71) Mark owners are incentivized to maintain a consistent quality of goods in part because they can rely on trademark law to help remedy some attempts to free ride on the goodwill that stems from providing desirable goods of a constant quality. (72) As a byproduct, trademark protection also protects producer investment in developing source signification in the mark. (73)

There are other rationales for trademark protection and each one manifests some recognition of the importance of productive use as a justification for trademark rights or the importance of notice in the trademark system. The unfair competition rationale, for example, has been described as embracing two complementary functions: protecting business goodwill and protecting consumer recognition. (74) The development of business goodwill happens through the mark owner's productive use, and this use puts the public on notice of the goods or services offered by the owner under that mark.

Other rationales, like the unjust enrichment or anti-free-riding rationale. (75) and the Lockean labor rationale, (76) have been criticized because they are too property-like and reward the labor of mark creation instead of mark use. (77) In addition, the unjust-enrichment rationale has been challenged on the ground that it mistakenly maximizes the interest of the mark owner instead of the interests of the purchasing public, and this comes at the expense of competition, (78) Nevertheless, underlying both the unjust enrichment and Lockean rationales is the notion that the mark is protected because, by using the mark in commerce, the mark owner has engaged in the production of meaning, valuable to the public and competitors. To the extent that those doctrines are used to justify problematic shifts in trademark law, the error is not in rewarding productive use but in granting trademark rights without requiring productive use, or providing levels of protection that are too broad.

Consumer-focused rationales, like consumer protection (79) and consumer autonomy, (80) are more engaged with the notice side of the productive use equation. Marks are protected both because the protection keeps unscrupulous competitors from duping consumers, (81) and because it preserves the ability of consumers to differentiate between competitors' goods and services, (82) Protection of trademark rights can serve these consumer-focused functions even though marks do not convey perfect information. It must be noted, however, that consumers contribute to the creation of the property right as they come to use the mark as an indication of the mark owner's goods and services. (83) Some public uses can also pose a threat to those rights. Both dynamics are discussed in more detail in Part III.

C. The Notice Functions of Fencing, Color of Title, and Trademark Registration

For the aspiring property owner, even relatively limited productive use can secure property rights, when accompanying other notice-providing indicia. For example, fencing a parcel of property is usually treated as actual possession of the entire fenced portion, (84) sufficiently open and notorious to put the public and the record owner on notice of the claim, even if productive activity takes place only on a part of the parcel, (85) Likewise, taking the property under color of title is usually sufficient to establish use of the entire parcel designated in the faulty title, so long as the adverse possessor actually uses part of the property, (86) In some jurisdictions, the statutory period of exclusive possession required to secure title by adverse possession is shorter when the possession occurs under color of title, (87) In other jurisdictions, the adverse possession statute expressly excludes a transfer of property unless the possession occurs under color of title. (88) When an encroacher seeks to adversely possess real property, indications of notice like fencing or possessing under color of title will broaden the reach of the productive use. Thus, use of any portion of a fenced parcel amounts to constructive possession of the entire parcel, (89) Without actual possession, however, holding a flawed document that provides the color of title cannot by itself convey title to the property.

For the trademark owner, registration also resembles color of title: registration alone secures no rights, (90) Federal registration provides a mechanism to assert rights in a trademark, but provides only prima facie evidence that the registrant has used the mark in commerce. (91) While a trademark owner can file an application based on a bona fide intent to use a trademark in commerce, and that "ITU" application can give priority over a subsequent user, the applicant's rights do not vest until the mark is actually used in commerce. (92) Every registrant also has an obligation to provide continuing evidence of use, or the registration will be cancelled. (93) Thus, like possessing property under color of title, those rights conferred through trademark registration are contingent on actual use. (94)

In both regimes, productive use defines the scope of the right, but plus factors like color of title or fencing in the adverse possession context, or registration in the trademark context can alleviate some of the demands of productive use. (95) This is sensible because in both cases, those plus factors increase notice to the public of the claim to the property at issue. The faulty title, the fence, and the registration all provide objective evidence of the scope of the claim to the public, especially to potential competitors. Thus, it is reasonable to provide some benefits to the owner of a trademark registration, or the possessor who holds color of title, so long as those benefits do not strip the trademark system of the productive use requirement entirely. (96)

D. Continuous Use and Acquiring Distinctiveness

In addition to actual, open, and notorious use, both the adverse possessor and the trademark owner must engage in continuing productive use to secure rights. The adverse possessor must be in continuous possession for the statutory period, but "continuous" here is a term of art. Continuous adverse possession need not be literally continuous, but must be effectively continuous. For example, the continuous use requirement can be met through seasonal use, if that is reasonable for the location. (97) In addition, use by a seller who attempts to convey title to a buyer "tacks," or is counted for the benefit of the buyer, in meeting the statutorily required period of exclusive possession (98)

In its temporal aspect, acquiring trademark rights in a descriptive term closely resembles acquiring title to real property via adverse possession. A descriptive term is not protected upon its first use in commerce as a trademark because it does not initially communicate information about the source of the goods. Instead, the mark must acquire distinctiveness or secondary meaning: consumers must come to recognize that the mark signifies a consistent source for the goods or services. (99) Likewise, the Lanham Act bars the registration of a descriptive term until there is sufficient evidence that the term has acquired distinctiveness. (100)

Pursuant to section 2(f) of the Lanham Act, examiners with the United States Patent and Trademark Office (USPTO) have the option of treating five years of substantially exclusive and continuous use of a descriptive mark as prima facie evidence of secondary meaning and granting a registration based on such an affidavit. (101) This section 2(f) presumption is reminiscent of the adverse possession regime because in both cases, exclusive possession over time establishes the property right. Note, however, that while the USPTO can treat every descriptive mark as registrable after five years of exclusive use, different types of trademarks actually receive different treatment. For example, five years' use is generally enough for a mark based on a surname to acquire secondary meaning. (102) On the other hand, the statement of five years' use alone is insufficient to establish secondary meaning for trade dress that "is not inherently distinctive because of its nature." (103) This is consistent with the notice justification driving the trademark use requirement. The USPTO demonstrates an inclination to see a longer period of use before granting a registration to marks that are less inherently capable of providing notice to the public.

Any registration, including one for a descriptive mark that has acquired distinctiveness, can also become "incontestable" after five consecutive years of continuous use, so long as the mark is still in use, and so long as neither the registration nor the common law rights in the mark have been challenged. (104) The five-year window to acquire an incontestable registration resembles the adverse possession regime in its own right, with elements of notice (via the registration system) and at least an inferred requirement that the mark is used under claim of right and exclusively, in addition to the requirement of continuous use. In some jurisdictions, the existence of an incontestable registration is evidence of at least some level of commercial strength, even if the mark is merely descriptive. (105)

Courts also frequently evaluate length of use in determining whether secondary meaning has been acquired, (106) but there is no established time for how long a mark must be used in commerce before it acquires secondary meaning. (107) Courts have repeatedly opined that there is no per se minimum amount of time required to establish secondary meaning, (108) but also no maximum beyond which secondary meaning will automatically accrue. (109) Even though courts disclaim any precise amount of time as necessary or sufficient to acquire commercial strength, length of use is a factor always considered, and in some cases, dispositive. For example, in Marilyn Miglin Model Makeup, Inc. v. Jovan, Inc., the court concluded the paucity in length of use less than four years was brief enough that yearly sales of over $3 million and an advertising budget averaging more than $500,000 per year was insufficient to establish secondary meaning. (110)

The similarity between the acquisition of property through adverse possession and the acquisition of trademark rights in a descriptive term is therefore fairly apparent. The tale typically told is that the descriptive term may pull itself up by its bootstraps, acquire distinctiveness, and become a trademark. On the other hand, inherently distinctive marks are treated as strong and protectable perpetually and without question from first use. (111) This does not line up with the traditional account of property acquisition through adverse possession. That apparent conundrum is addressed in Part II.A.

II. PRODUCTIVE USE AND TRADEMARK SCOPE

While Part I described the closest analogies between adverse possession and trademark acquisition, this Part considers some apparent differences in the regimes and reveals the hidden consistencies when those differences are considered through the lens of the productive use requirement. Part II.A addresses in detail the apparent dissonance between adverse possession and the acquisition of rights in inherently distinctive marks. The distance between the regimes is lessened when one realizes that the evidence required to produce secondary meaning in a descriptive term is the same evidence presented to establish the commercial strength, and thus the enforceability, of an inherently distinctive mark. Part II.B addresses the "hostility" misnomer that has crept into adverse possession doctrine. The productive use framework clarifies how claiming rights in both regimes focuses on providing the public with notice of the respective claims. Part II.C discusses the surface tension between adverse possession's exclusivity requirement and the exclusivity requirement in trademark law and shows how the comparison clarifies the nature of the property secured by the trademark owner.

A. Productive Use and Inherently Distinctive Marks

As discussed in Part I.D, acquiring rights in a descriptive mark resembles adverse possession in its temporal aspect. At first glance, the protection for inherently distinctive marks seems, in comparison, to barely resemble adverse possession. Unlike a descriptive term, an inherently distinctive mark is treated as source signifying on its first use in commerce, so long as that first use is followed by "continuous commercial utilization." (112) That first use grants priority against other users of the same or similar marks for the same or similar services, (113)

Inherently distinctive marks are treated as possessing secondary meaning at the moment of their first use in commerce because there was no other descriptive primary meaning related to the goods or services at issue. A fanciful or coined mark, like XEROX for photocopying machines, is invented whole cloth and has no meaning prior to its use as a trademark. An arbitrary mark, like APPLE for computers, creates new meaning for a term with which we are familiar. While a suggestive mark, like GLEEM for toothpaste, is more closely related to the underlying goods or services than other inherently distinctive marks, it still requires a conceptual leap to get from the suggestive term to the product's features. All of these marks transform language and create new meaning in their inception and use, and are thus inherently communicative. There is also no requirement to show any particular duration of use in commerce before registering an inherently distinctive mark, so long as the mark has been used in commerce. (114) Thus, for inherently distinctive marks, it appears that protection is automatic, and adverse possession might be a poor analogy.

As this Subpart highlights, however, the use in commerce necessary to acquire secondary meaning in a descriptive term is effectively the same use necessary to establish the commercial strength of an inherently distinctive mark. Without sufficient commercial strength, developed over time, the right to exclusive use of the inherently distinctive mark is largely illusory. In both cases, productive use over time is the signal that informs the public about how much value the mark owner places in the mark. That productive use over time also reduces search costs for consumers by identifying a consistent source for mark-bearing goods and services.

Barton Beebe's comprehensive study of likelihood of confusion cases in the federal district courts over a five-year period calls into question the traditional story about automatic protection of inherently strong marks, (115) Beebe's study shows when the assessment of the mark's inherent strength is at odds with the mark's acquired strength, the finding of acquired strength trumps inherent strength. (116) In other words, it is the use of the mark in commerce and the notice function served by that use, rather than its inherent conceptual distinctiveness, that matters most.

A descriptive term must acquire significance in the marketplace as a designation for goods and services, becoming protectable and registrable through use in commerce. When trying to determine whether a descriptive mark has acquired secondary meaning (or an inherently distinctive mark has amassed commercial strength), courts look to two overarching questions. First, do consumers see the mark as source signifying, measured through consumer surveys and evidence of actual consumer confusion? (117) Judges tend to distrust the validity of survey evidence, (118) and evidence of actual consumer confusion can be hard to come by. (119) So courts turn to a second question: Has the mark owner done enough to establish the mark in the minds of consumers through advertising, sales volume, and length of use? Courts tend to give great weight to the efforts made by the mark owner to move the mark through commerce, including money spent on advertising, volume of product moved and sales of goods or services. Time in the market also provides prima facie evidence that a descriptive mark has acquired secondary meaning (which the USPTO can choose to recognize in the registration context). (120) In the ex post generic-ness context, efforts to educate consumers, lexicographers, and other language shapers regarding proper use of its marks are also important. (121) These factors all serve as proxy evidence that the consuming public has taken notice of and imbued the mark with source significance.

These are effectively the same factors that courts consider when trying to determine whether a mark (whether its source significance is inherent or acquired) has developed the commercial strength that would suggest use by competitors to sell similar goods under similar marks should lead to a finding that confusion was likely. (122) For example, in the Second Circuit, courts consider consumer testimony; consumer surveys; the exclusivity, length, and manner of the mark owner's use; the amount and manner of advertising; the amount of sales and number of consumers; the mark's established place in the market measured through unsolicited media coverage; and proof of intentional copying. (123) Thus, the strength of a mark the property right secured is a matter both of inherent strength (or lack thereof) and commercial strength, or developed strength in the marketplace. As Beebe's study reports, a conclusion by the court that the mark is commercially weak, even if inherently strong, appears virtually fatal to a claim of trademark infringement. (124)

Beebe concludes from this evidence that district courts recognize that "acquired or 'actual strength' in the marketplace logically incorporates the effects of the mark's inherent strength." (125) It may be equally likely that courts recognize that successful use in commerce, rather than inherent strength, provides the strongest indicator of trademark ownership. While many of the likelihood-of-confusion factors key into the conflict between the parties (similarity of marks and goods, proximity of services, likelihood that the plaintiff will bridge the gap) and the perception of consumers (evidence of actual confusion), strength of the mark is really about the extent to which the trademark owner has claimed the right to use the trademark, shown by the breadth and length of her use of the mark in commerce.

It is probably correct to say that marks starting from a position of inherent strength are more readily able to acquire strength in the market, perhaps because consumers more easily recognize inherently distinctive marks as source signifying. (126) But the district court decisions analyzed in Beebe's study lean more heavily on the paucity of commercial strength than the presence of inherent strength when determining whether the mark in question is strong and whether there is a likelihood of confusion. For example, in We Media Inc. v. General Electric Co., plaintiff's marks WE and WEMEDIA for magazines and newsletters promoting the disabled community were found to be suggestive. (127) The court presumed the suggestive marks were strong, but that presumptive strength was "reduced to reflect third-party usage and [plaintiff's] own lack of usage." (128)

Here, the subtle difference between trademark acquisition and adverse possession helps us understand this account, In the trademark context, there remains both an affirmative duty to provide affidavits of continuing use and the risk that failure to use the mark in commerce will abandon the mark to the public domain. (129) We might therefore analogize inherent strength to plus factors like possession under color of title and fencing in the adverse possession context. (130) The communicative nature of the inherently distinctive mark suggests that consumers will quickly, if not automatically, recognize the mark as source signifying, but the scope of the protection granted depends more on the mark's commercial strength developed over time.

B. Claims of Right and the Hostility Misnomer

Scholars analyzing adverse possession have traditionally focused on the subjective hostility or adversity of the occupier. (131) The comparison to trademark law helps clarify that such hostility is a misnomer. Courts should instead focus on the objective assertion of ownership via notifying productive use. It is the use supporting that assertion which provides sufficient notice to the public and other potential claimants, regardless of the adverse possessor's internal hostility.

As discussed in Part I.B, open and notorious occupation of property notifies the public and the record owner of the occupier's claim to the property. Open and notorious use of the mark in commerce puts the public and potential competitors on notice in the same way. In both cases, the occupier is asserting a claim of right treating the property as her own, and holding the property without the permission of a record owner. (132)

In the adverse possession context, permitted use is not trespass and cannot lead to an action by the record owner against the occupier for ejectment. (133) This is so because a contrary rule would allow a permitted occupant to sandbag the owner and spring an adverse possession claim without providing fair notice to the owner of her intentions.

While scholars have argued at length about whether a claim of right properly requires or rejects knowing or "bad faith" possession, (134) the controversy dissipates when one understands that adverse possession keys on productive use that provides notice to the world of the claim of the adverse possessor. As the Supreme Court noted as far back as 1851, what is crucial is that the possessor "claims [the property] for himself," in other words, "adversely to all the world." (135) In its abstract and doctrinal sense, the issue of bad faith adverse possession has not been resolved. These doctrinal variations and the scholarship surrounding them nevertheless all point, perhaps unknowingly, toward the same conclusion: either intentional or unintentional possession of property belonging to another can be considered possession under claim of right to the extent it puts the public on notice of the adverse possessor's claim. The critical element is that to secure title in the property, the occupier must act like an owner. Whether or not the possession is innocent or intentional, it is consistent with the productive use rationale to incentivize possession that sends a signal sufficiently strong to prevent ambush of the record owner and provide notice to the public. It is the information forcing value of the productive use that should be preserved. (136)

On the surface, the trademark owner does not look like an "adverse" or "hosthe" possessor because under the hostility misnomer, it has become common to think of the adversity as a head-to-head battle between an active user and a neglectful owner. The one who puts a descriptive, suggestive, or arbitrary term to work as a trademark is not seen to take that term from any other entity with a preexisting right in the term. The disjunction is even more pronounced where the mark owner coins a fanciful term that never before existed. But at its heart, adverse possession requires only that the adverse possessor not be a permitted occupier, to avoid the problem of ambush. Once that distinction is understood, we can focus on the information-forcing and notice-providing value of the mark owner's productive use.

The trademark owner makes her claim of right when she polices against infringement. Judge Richard Posner articulated a high standard for trademark owners who desire to retain their marks: "A serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazine and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service." (137) For the trademark owner, acting like an owner is particularly critical in determining the scope of the mark's protection and whether potentially confusing junior use can be enjoined. Settling with a competitor who uses a similar or identical mark to sell similar goods or services can result in weak protection against third parties using the same mark on less similar goods and services. For example, when two competitors divided the rights between SUNKIST for fruits and SUN KIST for vegetables, respectively, the court denied their joint request to stop the use of SUNKIST as a mark for bread. (138)

More generally, crowding of a particular word or symbol with third-party uses narrows the scope of any given mark created using that word or symbol. (139) For example, in the recent dispute over trademark rights in Betty Boop, the Ninth Circuit noted that fractured ownership of the Betty Boop copyrights could make it difficult for a mark owner to acquire secondary meaning, because use by other companies may lead to widespread confusion and destroy secondary meaning in the mark. (140)
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Title Annotation:Introduction through II. Productive Use and Trademark Scope B. Claims of Right and the Hostility Misnomer, p. 703-733
Author:Linford, Jake
Publication:Case Western Reserve Law Review
Date:Mar 22, 2013
Words:7652
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