Does a Trade Mark Have To Be Factually Truthful?

Several of my fellow Kats managed to do a better job than I in juggling the recent INTA meeting in San Francisco with other tasks, as evidenced by my recent silence. Just for the record though--I did set a new speed record for the fastest dash by a post 60-year old as he literally ran from Gate L1 to Gate 17K at O'Hare airport in Chicago to catch a trans-Atlantic flight. With those heroics now behind me, it is time to get back to IPKat and the the task at hand.

In keeping with INTA and its focus on trade marks, permit me to pose the following question: Does a trade mark have to be truthful? In one sense, the answer is most certainly "yes". The source theory of trade marks is predicated on the notion that no one is permitted to use your mark if such usage might deceive the public with respect to the source of the goods or services. In this case, therefore, a trade mark has to be truthful with respect to source.

But what about a mark that lies somewhere in that murky area between being descriptive and suggestive? Here we can find ourself in a situation in which the mark, even if registered, still has an element of descriptiveness with respect to the goods or services which it identifies. What happens, as a matter of trade mark law, if that descriptive element is factually inaccurate with respect to the underlying goods or services? In particular, can the mark, being descriptively innacurate, prevent a third party from using the same term in an accurate manner in connection with the same goods or services?

I thought of this question in connection with that most curious American phenomenon, the big business of intercollegiate sports. Alongside the educational function, most American colleges and universities maintain large athletic programmes, most notably in (American-style) football and basketball (think "March Madness") that pay seven-figure salaries for the head coach and fill stadia of 100,000 or more seats. For efficiency purposes, most colleges and universities belong to one of a number of sports conferences. The members of each such conference are usually in geographic proximity with each other, which cuts down on travel and fosters natural rivalries between the flagship universities of contiguous states (think Ohio State and University of Michigan).

Not surprisingly, each conference has a name -- and in this lies the potential for factual inaccuracy. Two of the most well-known conferences are the Big Ten Conference and the the Big 12 Conference. The problem is that the Big 10 Conference now contains 12 memembers (with the recent addition of the University of Nebraska) and the Big 12 Conference now contains only 10 members (with the departure of the University of Colorado and the University of Nebraska). Both of these conference names are registered as trade marks in one form or another.

And so--the question. Should both the Big Ten and the Big 12 be allowed to maintain their respective trade mark registrations in light of the fact that the reference to the respective number of conference members is in each case inaccurate? On the one hand, since there is no likelihood of confusion with respect to the ultimate organizational source of each of these sports conferences, it is possible to argue that the numerical inaccuracy is irrelevant as a matter of trade mark law. Indeed, if the respective names would simply be a matter of indicating how many members belong to each of these althetic conferences, it is arguable that neither should enjoy trade mark protection. The fact that each of these names is registered as a trade mark indicates that each of these names has achieved goodwill as an indicator of source.

On the other hand, consider a college athletic conference that has either ten or 12 members. Should such a conference be prevented from calling itself the "Big Ten" or the "Big 12", if such a designation is factually accurate, simply because in so doing, it would be liable for infringement? Stated otherwise, in a potential conflict between source identification and factual accuracy, isn't there something wrong in favouring the former over the latter?

For the record, I am a die-hard Ohio State supporter.  Ohio State is a member of the Big Ten Conference, which has 12 members, not ten members. I am not confused about the fact that the name Big Ten identifies a specific athletic conference that once had ten members, but now has 12 members (and may in the future have even more). As a trade mark practitioner, however, I wonder: should the Big Ten Conference (or Big 12 Conference) be forced to change its name?

More on the names of intercollegiate athletic conferences here.