Trade Marks and Brands: Cohabitation or Rustication?

This Kat has spent over 25 years actively engaged in the practice of trade mark law. Throughout that time, he has remained puzzled by the simple question: How do we understand the odd couple of IP law -- trade marks and brands? For those who need a bit of historical provenance, one of the most iconic cinematic creations of the 1960s was the comedy "The Odd Couple" here. The play and later movie unfolded the story of two divorced men, one, neurotic about neatness and the other, the consummate slob, who choose to live together, notwithstanding the stark differences in their personalities. Since that time, the phrase -- "the odd couple" -- has come to signify an uneasy cohabitation.

There is no more prevalent "odd couple" in the IP world than trade marks and brands. Think about it: no other IP rights cohabit in such a way. There is no correlative to brands for either a patent or copyright--a patent is a patent, and a copyright work is a copyright work. For trade marks, however, the matter is not so straightforward. There is both the trade mark and its correlative -- the brand (and its first cousin -- "brand equity"). However, the relationship between the two (or three or four) is uncertain. Indeed, the International Trademark Association, better known as INTA, the flagship organization in the trade mark field, despite its name, is wont to refer to the owners of trade marks as "brand owners" and not "trade mark owners", without really explaining the difference between them. Surely (or not so surely), not every owner of a trade mark is a correlative brand owner, but the distinction between the two is not clear.

 Valiantly trying to better understand these two terms, this Kat turned to definitions proposed by the commentators. Consider the following: Brand--"[C]omprises all publicly identifiable knowledge associated with a particular product, service, or company. The trademark is just the legally protectable portion" (Freno, "Trademark Valuation: Preserving Brand Equity", The Trademark Reporter, vol. 97, no. 6, 2007). Brand--"[T]he resultant of the attributes of a product [or a service--njw] and the way that it is advertised, its name, packaging, price, history and reputation, all of which act together to generate affect [italics in original] in consumers" (Belson, "Brand Protection in the Age of the Internet", [1999] EIPR 481). Brand equity--"[T]he interest in the economic value of brands as corporate assets that create wealth for the stakeholders in a corporation. Brand equity embraces brand-name awareness, brand loyalty, perceived brand quality and positive subjective associations. This leads to the proposition that brands are a form of intangible property which may be protected by the trade mark, copyright and patent laws, and by common law principles such as passing off" (Belson, supra). 

However, for this Kat, despite the heroic efforts of well-informed commentators such as Freno and Belson, the line of demarcation between these terms remains impenetrably murky. But the lack of clarity is not limited to commentators. It is also present in court judgments. While most of you were probably reading the decision of the Fourth Circuit of Appeals in Rosetta Stone Ltd. v Google, Inc. that revived the plaintiff's claims against Google for trade mark infringement (see the report by AmeriKat here), this Kat was also having a go at the case footnotes. In particular, he took notice of footnote number 2, which states as follow:

"Rosetta Stone conducted a brand equity study in February 2009 showing a substantial gap in actual recognition of the Rosetta Stone mark and the closest competing brand. When asked to identify without prompting "all brand names that come to mind when you think of language learning,"almost 45% of the respondents were able to recall "Rosetta Stone," while only about 6% thought of "Berlitz," the second-place finisher. J.A. 2288. When prompted, 74% indicated they had heard of Rosetta Stone language products, Berlitz, again the closest competitor, was familiar to only 23% of the respondents when prompted." 

 Not to be outdone, on page 45 of its decision, the court of appeals quoted the district court, which stated that

"Rosetta Stone Marks are famous and have been since at least 2009, when Rosetta Stone's brand awareness reached 75%." 

 For those of you who relish a confusion of terms, this footnote and text is for you. So what exactly did this survey measure -- trade mark recognition, brand recognition or brand equity? If one refers to the definitions above, then the three terms are not synonymous. And yet one is hard-pressed to give an unequivocal answer to our questions based on the language of the judgment. It could be said that demanding analytical precision here is a futile exercise in scholastic sophistry. We all "know" what the court means.

For this Kat, however, such a position is unsatisfying. If the Court is not clear on what exactly is being reported in the survey, then it can be reasonably be concluded that the court does not really understand the issue. Such a circumstance is clearly undesirable. It seems to this Kat that the upshot is that trade mark law and practice continue to cohabit as an uneasy odd couple. So let's throw down the gauntlet before INTA, as many of us prepare to attend the INTA annual meeting starting next weekend in Washington, DC. INTA--take upon yourself the responsibility to be a task force to clarify the metes and bounds of trade marks, brands and brand equity. Where does one begin and the other end? Or perhaps each of these constructs dwells in its own separate and autonomous sphere. If so, how we understand these spheres? Indeed, if brands and brand equity are so crucial, then perhaps the organization should change its name to the International Trademark and Brand Association (INTABA (?)). In any event, the time has come for INTA place brands front and center as the correlative partner of trade marks.