Trademarks, Resurrected

My former employer Lotus has (re)-launched Symphony, an office applications suite that competes with Microsoft Office. (Yes, I know this is like sending Elmo to take on Darth Vader.) Symphony uses Open Document Format, an open standard for application files.

The fun part is that this is the sequel to Symphony – the original, released in 1984, ran on DOS and was named by John Dvorak as one of the 10 worst software disasters. (Symphony is #4, Microsoft Bob is #10. That hurts.) Thus, IBM is recycling a trademark – and one with questionable associations to boot. (That “boot” may take a while if you use Windows.)

From a classical trademarks perspective, this makes sense. Trademarks allow IBM, as the Lanham Act tells us, to “identify and distinguish [its] goods… from those manufactured or sold by others and to indicate the source of the goods.” Computer users see “Symphony” and know immediately that IBM produces the software. (Let’s assume the users understand that IBM bought Lotus back in the 1990s.) As law students learn, trademarks help reduce consumers’ error costs by helping them find goods generated by a particular producer.

But trademarks do much more than that, and this is what interests me. Do you think Ford has plans to revive the Edsel? No? After all, car consumers probably know instantly that Edsel = Ford. But they also think Edsel = lemon. Trademarks indicate not only source, but also product characteristics. The challenging part is that those characteristics aren’t stable – Symphony, Tab, Taurus – and it’s not clear why we protect a brand trademark that may no longer usefully convey information about what the product is rather than who it’s from.

Technically, trademark law has a tool for this: abandonment. If you take actions that cause your brand to “lose its significance as a mark,” then your mark can be canceled – and your competitors may move to do so. But abandonment is difficult to show, and courts are reluctant to find abandonment. Moreover, it’s not clear what “significance as a mark” means. When Ford slaps Taurus on an entirely different model – the Five Hundred – car buyers still know instantly that the model is a Ford. They just don’t know what the car itself is like. So, if “significance” means only “source designation,” then abandonment doesn’t work well.

I think we need a legal tool to police moves by mark owners that may lead consumers astray when a mark for a model or product type – think iPod or Blackberry – no longer accurately reflects the product’s characteristics. There are at least two hard problems here. First, producers need to innovate; freezing consumer expectations at a given point in time is not helpful. Second, how do we measure and capture the key characteristics of a product that consumers associate with a mark? How much does Coca-Cola have to change the drink before we force them to call it New Coke? I’d love your thoughts on this.

3 Responses to “Trademarks, Resurrected”

  1. I doubt that Lotus has a much stronger claim than anyone else to the Symphony trademark if it hasn’t been sold since the 1980s. I think the mark is in a twilight where use by another would not be confusing, but use by IBM has nostalgic associations.

    Incidentally, Microsoft did the same thing with Access: it was originally the name for a ProComm clone terminal emulator / communications program.

  2. I agree with the argument that consumers should be protected from misleading marks but I think in practice the owners of marks don’t use strong marks as source identifiers for goods that are dramatically different from what the consumer expects from the mark.

    Your post doesn’t mention nor can I recall an example of a mark in use that no longer accurately reflects the product’s characteristics in the minds of the relevant consumers.

    If a producer did, wouldn’t it create a cause of action under §43 of the Lanham act?

    Turning to the encouragement of innovation. Policing how much a producer can alter a product before they have to use an alternative mark may lead to less innovation.

    Consider Coke. As valuable as the formula is, the mark is much more valuable. Coke isn’t the world leader because no one can produce sugar water that tastes like Coke. They lead because their (mark)eting and distribution are superior.

    If modifying the cola product could put the company at risk of losing the right to market under the Coke mark the company would be loath to modify the cola product. Put another way if innovation could cost a producer the use of a strong mark the producer will be less likely to innovate.

  3. Hi Joe, Hi Scott,

    Joe: You’re right about Symphony. When I looked up the relevant marks in the USPTO’s database, they had been canceled. To me, that says “abandoned.” Yet, would someone else want to use Symphony as a mark for computer software, giving the (tenuous but negative) lingering associations with Lotus’ product? The mark might almost fall into the anti-commons: the original owner doesn’t want it, but no one else can use it effectively either. And that’s interesting about Access…

    Scott: Good point about how often marks fail to reflect consumer expectations. This is something I’m very interested in as an empirical matter. I’d argue that Tab is a decent example: it used to be a cola-like soft drink, now it’s a Jolly Rancher-like energy drink. The trade dress and name are the same, but the stuff tastes very different. I don’t own a Taurus / Five Hundred, so I can’t really comment, but the two cars do seem different.

    I think it would be hard to sustain a 43(a) claim against a mark owner for causing confusion via one’s own mark – at least, I don’t know of any cases that would suggest such a claim could succeed. (I’d be delighted if someone could point me to such a case!)

    The innovation point is interesting. We don’t normally think of TMs as involved with innovation, but your comment suggests that we could at least harm innovation with bad TM law or policy, which is neat. As for Coke, I am not sure your example holds up: what makes Coke powerful is the consistency of the Coke experience (hence the New Coke debacle). So, Coke already has significant disincentives to innovate with its core product. But that hasn’t stopped them from launching Coke Zero, the Diet Coke Plus (? – the one with vitamins), Cherry Coke, and so forth. All of those fit well with my approach and with innovation – no confusion, and plenty of new taste experiences.

    Thanks for reading!