Living in Detroit, one hears a great deal about the American automobile industry (indeed, the local news covers little else, with the exception of Michigan firing Tommy Amaker as basketball coach). Car pundits, perhaps in the pay of rental fleets, panned Ford’s decision to discontinue the Taurus sedan / station wagon (as did new CEO Alan Mullaly), noting the wide recognition of the model’s moniker. In addition, this fall I began drinking Tab energy drinks as an alternative to Red Bull, which tastes like cough syrup, and coffee, which tastes like burned motor oil. I had thought that Tab vanished in the early 1980s, when consumers switched to soft drinks that didn’t constantly taste stale.
Slate has picked up on this odd pattern: the re-emergence of well-known brands / trademarks, often on altogether different products in the same market. Ford re-christened its Five Hundred sedan (not to be confused with the Gang of 500, Chrysler’s 300, or the other 300) as the Taurus. Coca-Cola brought back Tab to enter the energy drink market. Life went from a famous photo magazine to a Sunday newspaper insert, of the sort that would feature articles like “Paris Hilton: All Grown Up, She Talks About Life’s Lessons, Pet Ownership, and Staying Strong.”
This phoenix-like resurrection of new wine in old bottles raises some trademark questions. To wit: rewind a year or so. If I put out an energy drink called Tab, Coca-Cola can sue me on the theory consumers still associate the brand with the company (“residual goodwill” in trademark parlance), leading thirsty clubgoers to assume Coca-Cola produced the stuff they’re mixing with vodka. Consumers know who produces Tab and what it is; my concoction will confuse them into believing they’re drinking a Coke-produced low-cal soft drink. If Coke comes out with a new, entirely different product and slaps the Tab label on it, though, there’s no legally cognizable harm – after all, the source / producer of the beverage is the same, even if the stuff in the can is different. Ditto the Five Hundred: my mother-in-law is a devoted Taurus buyer. She replaces her car every six years or so. What happens when she goes to the Ford dealership, sees the familiar name, and purchases what is really an entirely different car?
There’s a tension in trademark. Trademarks are defined as source identifiers: we can be sure that McDonald’s is the same everywhere because it’s the company founded by Ray Kroc that runs them all (ignore franchising for the moment). Therefore, marks are informationally efficient: they let consumers use a convenient shorthand rather than having to inspect everything they buy carefully. Trademark doctrine, under the Lanham Act and relevant state unfair competition theories, protects against competitors who try to freeload on these symbols, thereby confusing and harming both consumer and producer. But what happens when a producer runs the risk of confusing consumers? Shifting a mark between similar goods can fool consumers, who have one set of expectations regarding the brand, but find it’s no longer accurate – even though the source is the same.
Two remedies suggest themselves, neither appealing. First, one might view the producer as losing the rights to that mark – in effect, the mark falls into the public domain. The problem with this approach is that it risks even greater consumer confusion, at least in the short run. Second, one might contemplate a remedy by consumers against producers, especially if producers don’t use a disclaimer (“New and improved!”) on the relevant product. But courts would likely not go for this, especially if trademark’s touchstone is source identification and not product characteristic identification.
I’d welcome thoughts on other remedies.