A Linguistic Justification for Protecting "Generic" Trademarks

TABLE OF CONTENTS Introduction I. Consumer Perception and Trademark Incapacity A. Trademark Law, Consumer Perception, and Consumer Confusion B. Trademark Incapacity in the Case Law C. Standard Justifications for and Prior Critiques of Trademark Incapacity II. Language Change and Trademark Meaning A. Semantic Shift and the Abercrombie Spectrum B. Regularity of Restriction in Semantic Shift III. Trademark (In)Capacity and the Myth of Shift-Resistant Terms A. Recognizing Trademark's Capacities 1. Refuting the Error-Cost Justification for Trademark Incapacity 2. Rebutting the Competition Justification for Trademark Incapacity B. The Primary Significance Test Best Measures Semantic Shift Conclusion INTRODUCTION A term that designates a singular source for goods and services, rather than the goods or services themselves, qualifies for protection as a trademark. Trademark law thus turns in large part on when a word or symbol acquires and loses source-signifying meaning in the eyes of consumers. While linguistics--the study of symbols and their meanings--has made limited inroads in the analysis of trademark law and policy, (1) the existing scholarship has yet to mine a cornerstone concept in linguistics: semantic shift. (2) The study of semantic shift in historical and cognitive semantic literatures is the study of how a given word changes over time--first by entering the public lexicon, and then by gaining or losing meanings. (3) These new words and meanings enter the lexicon as speakers search for new ways to express themselves. As Stephen Ullmann recognized half a century ago, "The need to find a new name is ... an extremely important cause of semantic changes." (4) Simply put, semantic shift is change in the meaning of a word. The process of creating trademark meaning shares many characteristics with other types of semantic shift. A trademark is a word, phrase, or symbol that identifies goods or services from a particular source. (5) When a word or symbol gains source-signifying meaning, it qualifies for protection as a trademark. Like other forms of semantic shift, investing a trademark with meaning adds a new entry to the commercial lexicon. For example, the Beatles plucked APPLE from among many preexisting options as a trademark for their record label, while Steve Jobs and Steve Wozniak picked APPLE as a trademark for personal computers. At other times, a trademark is an entirely new entry into the lexicon. For instance, the word XEROX did not exist before it was coined as a designation for photocopiers. In both cases, language changes to accommodate new terms or new meanings for existing terms. As a doctrinal matter, whether a given word obtains protection as a trademark turns in part on the relationship between the claimed mark and the word or words from which it is derived. That relationship is mapped out along a spectrum of inherent strength, most famously articulated in Abercrombie & Fitch Co. v. Hunting World, Inc. (6) The court in Abercrombie established that the strength of a mark's claim to trademark protection depends on the likelihood that consumers will be able to invest the mark with source-signifying meaning, based on the distance between the mark chosen and the good it signifies. While scholars have criticized the Abercrombie spectrum as inaccurate or an unwelcome distraction from more crucial inquiries, (7) these categories generally reflect regular forms of semantic shift. (8) However, the synchronicity between theories of semantic shift and the legal reality of trademark acquisition breaks down when we reach the treatment of "generic" trademarks--words that identify, or have identified, a good or service--but subsequently acquire source-signifying meaning. Under the doctrine of "trademark incapacity," (9) courts dismiss evidence that consumers perceive a term as source-signifying, cabining the evidence as an indication merely of de facto--i. …