[stextbox id=’info’ caption=’Tyler Hall’s thoughts on garbagio goods’]
The Twitter thread that led to this blog post started when trademark lawyer Tyler Hall suggested, on Twitter, that a story reporting “bootleg logos are a fashion must-have” tells us something more profound about trademarks:
Increasingly we the people have stopped using #trademarks to ID quality G/S [goods or services] but to identify ourselves within something else
Following an insightful response from Pamela Chestek, a fine thread ensued involving some of the worthiest trademark commentators, wherein dependable and scholarly friend Anne Gilson Lalonde stood up and said,
LIKELIHOOD TO CONFUSE had a great blog post on this that I can’t find now.
Ron: “Pro tip: “For T-shirts” is pretty much always, and virtually never not other than, a clue that the “trademark” in question is for garbagio goods and IS NOT BEING USED AS A TRADEMARK.”
Which is the proper thing for a friend to do when one’s friend has written a “great post”! Which was this one.
Tyler, who started everything, kept at it. He’d clearly thought hard about this topic. So I asked him if he would consider putting his thoughts together and allowing me to publish them here as a guest post. He graciously agreed, and below you will find the result.
Tyler is a business attorney at Black Helterline LLP, where he focuses on trademarks and copyrights, contracts, and licensing work. He also, of course, can be found on Twitter @winslowthall. And now you have found him, and his insightful analysis of this topic, right here at LIKELIHOOD OF CONFUSION™. — RDC [/stextbox]
Trademark-as-a-Product v. Ornamental
Sparked by a question from Pamela Chestek about promotional goods, I got to thinking about when a design or word on a promotional good is a trademark, and when it is merely an ornamental element.
When it does in fact function as a trademark, I call this configuration a “trademark-as-a-product.” It is not a concept that is entirely brand new, but understanding it can help us focus on interesting questions about trademarks, and what trademark law protects, that I wish we talked about more.
First, what is a promotional good? It is a good with a trademark on it where the good is not what the brand associated with that mark is known for, the purposes of which are to further monetize and promote the markholder’s “real” goods or services.
For example, Ferrari made its name building cars, and the Ferrari mark on a car indicates a fast car of extremely high quality. Ferrari can also, however, sell or license various knick-knacks adorned with their mark to promote their brand and boost revenue. The t-shirt is perhaps the ultimate promotional good (and this blog’s feelings about “trademarks” on t-shirts are clear), but hats, golf balls, koozies, pens… these all work as promotional goods too.
Pamela asked whether the NFL logo printed on a t-shirt was just an ornamental element, or whether it was a trademark. The difference, of course, is that if it is just ornamental it is not protected, but if it is a trademark, unlicensed use would not be infringement.
My instinct was that yes, unauthorized use should be infringement, and the NFL logo’s placement of its logo on a t-shirt must be trademark use — that is, it is “functioning as a trademark.”
But what makes this use different from use an ornament, i.e., a t-shirt “decoration”?
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I eventually distilled my thought process into the following:
Both ornamental and trademark-as-a-product use of a mark increase the value of the good in question because consumers buy the t-shirt because of what is on the t-shirt. The difference, however, is that the trademark-as-a-product includes the source-identifying function that the logo has built up through use elsewhere to the promotional good it’s now on. Ornamental elements do not, and for this reason cannot be trademarks like the trademark-as-a-product. While the two look the same, consumers understand them differently because of the meaning (or lack thereof) that they have elsewhere.
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How do we tell the difference? My initial thought was it depended on whether the design is the reason a consumer buys the promotional good bearing the mark (let’s use t-shirts as our example promotional good for this post) over one that does not have it. In fact, though, we know that a consumer may also buy a t-shirt with an ornamental element on it simply because of that element. In either case, it is the design or word (whether trademark or ornamental element) that makes one t-shirt more valuable to a consumer than another t-shirt.
What, then, differentiates a design or word that is a trademark on promotional goods from one that is an ornamental element?
The brilliantly-obvious answer is that the trademark is a trademark, and is recognized as one. In our example, the NFL trademark was already a trademark before it appeared on a t-shirt, meaning it already had a source-identifying quality it could bring to promotional goods. An ornamental element does not have this quality.
Going back to the Ferrari example, the Ferrari trademark on a car indicates a fast, high-quality car. When a consumer sees that trademark on a car the consumer knows the car is fast and high-quality, and the consumer buys the car for these qualities the Ferrari trademark signals.
Similarly, the NFL trademark indicates the highest level of football competition. When a consumer sees that trademark on a football broadcast or jersey, the consumer is reminded of football played at the highest level. The NFL and Ferrari trademarks each have a source-identifying value developed before and independent of their being on a t-shirt that they can bring to the t-shirt.
Importantly, this source-identifying value differentiates the NFL and Ferrari trademarks used on promotional items from the scenario this blog identified involving “trademarks” found nowhere but on t-shirts and the like. When a design or word doesn’t have any pre-existing source-identifying quality being communicated, it is hard to say that it is functioning as a trademark.
There’s a second difference too. On a t-shirt, the Ferrari trademark doesn’t tell the consumer anything about the speed or quality of the t-shirt, and the NFL trademark doesn’t say anything of the football-playing quality of the t-shirt. Nonetheless, the consumer still buys the t-shirt that has the NFL or Ferrari trademark on it — or the one with an ornamental element on it — by choice. If the consumer prefers the t-shirt with a given ornamental element’s aesthetic qualities, that choice tell us nothing about trademarks, at least where no a source-identifying quality has yet developed with respect to the ornamental element.
In contrast, when a consumer buys one t-shirt with a trademark over another t-shirt, what is the consumer choosing?
The consumer buys the t-shirt with a trademark to get the source-identifying qualities that trademark brings.
And that’s a trademark-as-a-product. It’s different from an ornamental element that merely provides an aesthetic feature, and also different from a “traditional” trademark, which are not bought in and of themselves but serve to say something about the product. When it comes to a trademark-as-a-product, consumers are buying the product for the opportunity to identify themselves with the source the trademark-as-a-product identifies, and to identify themselves with the other individual so self-identifying. The trademark, and specifically its source-identifying quality, is the product being bought.
Pamela came back with a great follow-up:
But that’s the issue, it’s a proof problem. And not always clear, esp. if you’re not the demographic. Trademark? https://t.co/xVeoBe9JJ7 Was it when the company first launched?
— Her Mavenship (@pchestek) January 2, 2018
We’re still left with the issue of when a design or word has developed that source-identifying quality that makes it a trademark rather than an ornamental element. Because, at some point, all trademarks were just ornamental, before they developed a source-identifying value.
Take the example from Pamela’s response: at what point did the Life is Good logo become more than just ornamental and develop source-identifying qualities? That’s the issue of proof we’re left with.
There aren’t two definite, static categories of trademark-as-a-product and ornamental elements. We know that a descriptive mark can acquire secondary meaning and become protectable. Similarly, overtime an ornamental element which cannot function as a trademark could develop source-identifying qualities to the point that it is finally able to function as a trademark. This is developed in depth in Professor Alexandra Robert’s upcoming article on use as a trademark, who argues that the trademark use is “the red-headed step-child” of trademark law, cast in the shadow of trademark law’s favorite child, distinctiveness.
Still, for now I feel comfortable saying a design or word can acquire the ability to function as a trademark just as it can acquire the ability to be distinctive. Ultimately, though, Pamela is right: we’re left with a proof issue. All we can do here in the abstract is try to decide on a framework of the characteristics that tell us when a design or word is a trademark-as-a-product worth protecting, and when it is an un-protectable ornamental element. I’ll pass it to the litigators to argue that their clients’ respective marks really are trademarks.
Thanks for writing this! This provides a neat and consistent distinction between ornamental and trademark use on swag.
However, I still think it’s missing something.
It’s enticing to say that “If someone buys swag *because of* the presence of a *legitimate trademark,* then it’s a trademark use” because this makes the analysis very simple. We can look beyond the swag and check if the designation has any prior trademark value *anywhere*, and then separately ask whether the consumer would have purchased an undecorated or differently decorated item of the same type.
But I think this doesn’t add up, even for an apparent no-brainer like unofficial NFL Jerseys, because stopping the sale of unauthorized swag does not further trademark law’s source-identifying, consumer protection goals. Nobody will think less of the NFL’s primary services if an unofficial (or even official!) shirt shrinks in the wash. Or Ferrari. Or Coca Cola. Et cetera.
As this post hinted at but didn’t quite come right out and say: consumers of swag pay to decorate themselves with items that say something to the world: “I like X,” or “I am a person of type Y.”
To the extent the swag consumer buys “to express oneself,” and not “to get reliable quality” the consumer cannot be harmed by confusion about origin (let alone sponsorship), because the consumer simply doesn’t care.
I think trademark’s gradual creep towards being a right in gross makes us feel the need to force this value into the minds of consumers.