Academic journal article Santa Clara High Technology Law Journal

A Linguistic Look at Trademark Dilution

Academic journal article Santa Clara High Technology Law Journal

A Linguistic Look at Trademark Dilution

Article excerpt

Abstract

Trademark dilution, despite its significance as a cause of action in trademark law, has not been as heavily analyzed by scholars within the field of linguistics and law as one might expect. This article reviews contributions that linguists have made to trademark law and suggests that established linguistic methodologies might assist legal practitioners in formulating causes of actions based on trademark dilution.

I. INTRODUCTION

Trademark dilution is a topic that has rarely been engaged within the specialized field of linguistics and law, (1) even by those scholars who regularly consult with law firms on trademark issues and on occasion testify as expert witnesses in trademark litigation. (2) "Forensic linguists" have long been accepted as legitimate social-science expert witnesses on such trademark matters as strength of mark and likelihood of confusion, (3) but very rarely have they opined directly on dilution issues. This essay (1) reviews the types of contributions that linguists have commonly made with respect to trademarks (including a look at two cases in which the testimony of linguists may have had some effect on the determination of dilution); and (2) presents some suggestions about how established methodologies of linguistics might be of service to legal professionals in construing dilution in theory and practice.

II. TRADEMARK DILUTION AND LINGUISTIC MEASURES OF "FAME"

Apart from the specialized field of linguistics and law, conceptualizing trademarks as linguistic objects has been almost entirely in the service of the linguistic subspecialty known as lexicography or dictionary making. (4) Because trademarks are in most respects full-fledged words in the language, lexicographers have needed to be able to define such terms as trademark, service mark, and brand name not only as dictionary entries but also as terms of art within the field itself.

Furthermore, dictionary makers have needed to develop concepts akin to the legal notion, important to dilution issues, of trademark fame. Even unabridged dictionaries cannot possibly list and define all of the words that speakers of English use--let alone all of the trademarks. Thus dictionary makers have had to find some principled means for ranking words according to their lexicographical importance--so as to be able to exclude some and include others. The criteria that have evolved require something of a lexicographical balancing act: (a) special consideration is given to relatively arcane terms that the general user of a dictionary might nonetheless have occasion to look up (for example, brand names for pharmaceuticals); yet (b) terms must also be included that are so frequent in occurrence and central to the ordinary speaker's knowledge of the language that they belong in every dictionary as a matter of record--what to the lexicographer are, in effect, "famous" words.

Thus the notion of the relative fame of a trademark, so important to determination of the legal potential for dilution, intersects with the lexicographical necessity for taking into account the degree to which a word might be considered well known. Within the legal framework, such evaluation cannot of course be a simple matter of (a) declaring a trademark "famous" that appears in standard dictionaries and (b) giving an automatic lesser status to trademarks that do not appear therein--if for no other reason than that standard dictionaries find room for very few trademarks at all. For example, The American Heritage Dictionary of the English Language has over 70,000 entries, only about 300 of which are defined as active trademarks. (5) Moreover, of the listed live trademarks, a number appear to be relatively obscure--the kind of words that are listed because the dictionary maker may well have concluded that the general public will not be familiar with them (for example, Pentothol, Butazoladin, Lastex, Mauser, Bondo). (6) Others appear intuitively to be so famous that portions of the public may need to be instructed that they are trademarks and not generic terms (for example, Band-Aid, Frisbee, Mace, Kleenex, Xerox). …

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