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!

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.

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