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Introduction “[I]f we can control the environment in which rapid cognition takes place, then we can control rapid cognition.”2 Malcolm Gladwell’s Blink: The Power of Thinking Without Thinking popularizes some provocative research and anecdotes about rapid cognition, claiming that many of our opinions are formed in the first seconds of an encounter. Students viewing a few seconds of a teacher with the sound turned off produce basically the same ratings of her effectiveness as students who have her for a full semester.3 Ordinary research subjects can similarly use ten-second clips of a doctor talking to a patient to predict quite accurately whether the doctor will be sued for malpractice.4 If first impressions dominate, then managing a trademark’s selling power requires control over those first impressions in a consumer’s mind. In the search for ever greater understanding of consumer behavior, neuromarketing is a hot topic because it breaks those first impressions down into mere milliseconds. It also appeals to an objective truth behind intangible brand values.5 Magnetic resonance imaging allows researchers to see that different areas in the brain light up in blinded versus nonblinded taste tests, adding to our understanding of the persistent finding that people like Pepsi better than Coke – until they know what it is they’re drinking, at which point preferences shift to Coke.6 Part of what people are drinking is the trademark. Their positive associations with the brand change the experience of tasting soda, evoking memories along with immediate sensory impressions. Neuroscience thus promises to explain why we buy and to give advertisers information about consumers’ brains that consumers themselves don’t know. Much of this information is proprietary and inaccessible to academic research, but some is publicly available.
Thanks to the Georgetown Summer Brown Bag Workshop for comments on the beginning of this project. MALCOLM GLADWELL, BLINK: THE POWER OF THINKING WITHOUT THINKING 253 (2005). Gladwell is not discussing marketing, but his argument relies on evidence from marketing studies and applies to advertisers as well as policymakers. 3 See GLADWELL, supra note , at 12-13 (citing Nalini Anbady & Robert Rosenthal, Half a Minute: Predicting Teacher Evaluation from Thin Sices of Nonverba Behavior and Physical Attractiveness , 64 J. PERSONALITY & SOC. PSYCHOL. 431 (1993)). 4 See Gladwell, supra note , at 42 (citing Nalini Anbady et al., Surgeons’ Tone of Voice: A Clue to Malpractice History, 132 SURGERY 5 (2002)). 5 In a 2002 press release, Emory University’s neuromarketing research institute claimed it could “identify patterns of brain activity that reveal how a consumer is actually evaluating a product, object or advertisement…to help marketers better create products and services and to design more effective marketing campaigns.” Douglas Rushkoff, Reading the Consumer Mind: The Age of Neuromarketing Has Dawned, Feb. 2004, http://www.cognitiveliberty.org/neuro/Rushkoff_Neuromarketing.html (visited May 21, 2006). 6 See McClure et al., Neural Correlates of Behavioral Preference for Culturally Familiar Drinks , NEURON (2004).
Theories of branding existed long before researchers started looking for the seat of brand consciousness. The traditional justification for the rights granted by trademark law is that trademarks decrease search costs, meaning that a trademark offers consumers evidence of consistent quality, whether high, low, or indifferent, so that they need not open every box of Cheerios before purchase to inspect its quality. Trademarks function as mental shortcuts that enable consumers to skip conscious reasoning about product qualities. Confusing imitations of existing marks pollute the information environment, misleading consumers and ultimately decreasing their ability to rely on the shortcuts offered by marks, which leads to inefficiency in the market. For intellectual property, neuromarketing and related research projects promise to identify the mechanisms by which consumers identify and categorize brands. Though “law and the social sciences have very different ideologies and beliefs about language and human behavior,”7 social science research can be a weapon in the legal arsenal. Lawyers have started to appeal to scientific theories of cognition to explain trademark doctrines, particularly dilution, as legal responses to the way people process words and other symbols.8 Cognitive models offer hope of solving two related objections to dilution: First, the objection that its proponents haven’t identified any real harm caused by dilution, and second, the objection that dilution isn’t really an “it” – that we have no clear idea of what it means for there to be dilution. Conceiving of dilution as an increase in mental or internal search costs appears to solve those problems. The relevant legal concepts predate this new branch of marketing science, however, and may not map on to the research in the convenient ways practitioners have so far asserted.9 Neuroscience offers us data, but its legal relevance is far from clear, and needs to be theorized rather than simply treated as confirming and justifying current trademark doctrine. Nor should we readily assume that we should change the law to conform with the “objective” truth of the human brain. To take one significant issue, the supposed neurological correlates of dilution seem unlikely to be congruent with the commercial uses of a mark, whether by competitors or noncompetitors, that dilution law targets. Revamping dilution towards the psychologically-based mental search costs theory would
Roger W. Shuy, Linguistics and Trademark Dilution, http://www.rogershuy.com/download.php? file=RWS_article_trademark_dilution.pdf 3 (2003). 8 See, e.g., Jerre B. Swann, Sr., Dilution Redefined for the Year 2002, 92 Trademark Reporter 585, 585 (2002) (“[A] growing body of knowledge as to how the mind stores and retrieves brand information – the cognitive psychology of trademarks – has immense potential for explaining dilution theory in a marketplace context.”); infra note ; see also Laura R. Bradford, Parody and Perception: Using Cognitive Research to Expand Fair Use in Copyright, 46 B.C. L. Rev. 705 (2005) (making similar arguments for copyright doctrines); Jacob Jacoby, Dilution in Light of Victoria’s Secret: The Psychology, Variety and Measurement of Trademark Dilution, NYU Center for Law & Business Working Paper Series CLB-03020, at 9-11 (Nov. 5, 2003) (psychologist and trademark expert witness arguing that dilution has always been a psychological construct, now better understood). Trademark lawyers have long called on linguists for assistance in proving their cases. See ROGER SHUY, LINGUISTIC BATTLES IN TRADEMARK DISPUTES (2002); Janet E. Ainsworth, Linguistics as a Knowledge Domain in the Law, 54 DRAKE L. REV. 651, 66263 (2006). 9 See Bruce D. Burns, Experimental Law? Lessons from Experimental Economics on Applying Psychological Research To the Law, 2003 MICH. ST. L. REV 955, 956 (“Alteration in experimental conditions that leads to mean difference of response times of ten milliseconds may be extremely important in what it might tell us about a cognitive process, but it may be a long path before that finding leads to something that can be applied in a courtroom.”).
Part IV questions the descriptive accuracy of the cognitive/internal search costs model. Wells. neural activity suggests that they are making an emotional choice based on past experience. deals with normative implications. 1. [His] study was funded by a supermarket and three other companies Rose won't name. Part II reviews marketing theories of trademark value underlying the new cognitive science of trademark law. Your medial prefrontal cortex will start firing when you see something you adore [like Playboy].R. accepting for the sake of argument its descriptive accuracy.require us either to suppress a lot of what is conventionally understood to be free speech or to maintain dilution as a sort of rearguard doctrine. Courts and scholars may well reshape the concept of trademark dilution – and confusion – so that it fits our new science. Part III explains how these apply to dilution and how cognitive science and the economic theory of “internal search costs” have happily merged to explain dilution. 2004 (example used by). corresponding to what lawyers call acquired distinctiveness. 14 See Clive Thompson. 2003 (“M.13 It would be real then. machine. Part VI briefly concludes. and science offers increasingly sophisticated understandings of memory. says Steven P. 13 Id. In Search of the Buy Button.11 In a general sense. supra note . The Buy Button This is the promise of modern marketing science: “‘In the not-too-distant future. Rose. not simply a perfection of an intuited concept that science now allows us to define precisely. a professor of biology and director of brain and behavior research at [the Open University in Milton Keynes]. funding studies to learn more about the way that positive memories lead to current and future purchases. ATL. 1. The use of cognitive science to explain trademark doctrines raises the broader question of what empirical scientific research can tell us about legal doctrine. To an M.R. including implications for the scope of the dilution right.”). firms will be able to tell precisely if an advertising campaign or product redesign triggers the brain activity and neurochemical release associated with memory and action. Advertisers Probe Brains.14 10 Melanie Wells. N. There's a Sucker Born in Every Medial Prefrontal Cortex. Sept. Part V. not even important – to many consumers. 2003 (quoting James Bailey. scanning offers the promise of concrete facts -. People “choose Ben & Jerry’s ice cream largely for reasons other than taste.. even if you claim not to like it.I. 25.”12 That’s the example offered by Clinton Kilts. II. Times (Magazine). you cannot misrepresent your responses.-CONST. professor of organizational behavior at George Washington University). Feb. an Emory behavioral scientist. Raise Fears.’”10 Much of branding is a matter of memory. 3 . But this will be a choice. who reassures consumers that companies will respond to “a longing for good corporate citizenship” if it is revealed as a physical artifact in the mind. in ways that Ben & Jerry’s marketplace success apparently is not. sophisticated research into the way trademarks affect thinking offers hard evidence for the proposition that objective product attributes are not crucial – indeed. 11 When buyers choose a brand they really care about.Y.I.an unbiased glimpse at a consumer's mind in action. 12 David Wahlberg. protecting trademarks from only a tiny fraction of the mental harm to which they are vulnerable.R. J. Oct. Marketers have been eagerly chasing the science. FORBES.
Braun et al. CONSUMER PSYCHOLOGY 1 (2001). 11 J. 17 See Gladwell. CONSUMER RESEARCH. Low-Involvement Learning: Repetition and Coherence in Familiarity and Belief. at 163 (15% increase in yellow color on soda cans affects perception of lemon/lime flavor). Gladwell recounts a number of such stories. 319 (1999). John Deighton.15 The evidence isn’t limited to Coke. Scott A. 15 Whereas brain activity in the blind taste test was strongest in a region associated with reward-seeking. The label “Coke” appears to activate memories and preferences that are part of the drinking experience. Berns.21 Although not all advertising works. 25 J. Attending to others’ opinions creates relatively more activation in the prefrontal cortex. Despite Americans’ self-image as hardened. Hoch. making efforts to confirm advertising-generated expectations and to avoid feeling like a dupe who believed an untrue claim. id. 16 See Gladwell. even though they’re unconscious). see also id. Direct perception activates the parietal lobe. Hawkins & Stephen J. activity in the brand-conscious taste test was strongest in a spot associated with higher cognitive processes. The Interaction of Advertising and Evidence . supra note  (Gregory S. at 163-64 (changing a literal depiction of a human on a food package to a cartoon harms the product’s selling power). supra note . Scott A. advertising in general is quite successful at creating positive feelings associated with consumption. 18 See Ciardini.. Influence. the company had experimented with selling “Coffee Toffee” – still made with Heath Bars – and discovered that people liked the ice cream better when it was called “Coffee Heath Bar Crunch. an area that helps integrate visual images. PostExperience Effects on Consumer Memory.g. simply by being exposed to contrary opinions. at 12-13. HOW CUSTOMERS THINK: ESSENTIAL INSIGHTS INTO THE MIND OF THE MARKET 182-83. See McClure et al.. both evaluative (which of three lines on a page is longest?) and affective (was this a good movie?). leading people to believe objectively wrong statements about the world that their own independent cognition could get right. 212 (1992). at 164 (the tiny sprig of parsley between the r and the m of the Hormel logo “helps bring freshness to canned food”) (quoting consultant). 11 J. ALL MARKETERS ARE LIARS: THE POWER OF TELLING AUTHENTIC STORIES IN A LOW-TRUST WORLD 3-4 (2005) (discussing similar research results). 180-81 (describing various successful experiments in manipulating memories about products or services). see also SETH GODIN. 4 .17 Cars advertised with pictures of beautiful women are rated faster and better than cars without such pictures.” The response was that it did. 763 (1984). id. 19 J. believes that conforming to a group offers neurological rewards. They are drinking their good memories associated with Coke and its marketing – they are tasting the trademark. Influence. Berns’s experiments show that exposure to majority views affects perceptual processing. LowInvolvement Learning: Memory Without Evaluation.Likewise. 20 See. See id. I wrote to Ben & Jerry’s asking if it paid extra for the rights to call its coffee toffee ice cream “Coffee Heath Bar Crunch. and thus changes what individuals perceive. e. Braun. Consumers transfer feelings they have about packaging or trademarks to the product itself. supra note . 19 PSYCHOL. as noted in the Introduction.18 A number of years ago. other research reveals that people can be induced to change their perceptions. Kathryn A.. Hawkins et al. 19 See GERALD ZALTMAN. though previous studies have not used MRIs to show how the process works in the brain. 21 See Ciardini. neurological research has suggested that there is an objective physical correlate to the well-known finding that people like Coke better than Pepsi in non-blinded taste tests but reverse their preferences in blind taste tests. CONSUMER RES. which is associated with decisionmaking. Make My Memory: How Advertising Can Change Our Memories of the Past. at 161-63 (inexpensive brandy performs differently in taste tests depending on how elaborate the bottle is). a psychiatrist at Emory. id. at 161. supra note ..” Perhaps most disturbingly.20 People generally play along with advertising. at 158. CONSUMER RES. Kathryn A. & MARKETING 1 (2002). producing physiological changes.19 Repetition of advertising leads us to believe claims we initially discounted. 166-67.16 Margarine wrapped in foil beats wins taste tests against margarine not wrapped in foil. Wells.
DAVIS. L. 2006). not state-law dilution claims litigated in federal court. but many uncertainties of definition and proof will remain. 106 COLUMBIA L. 27.25 Proposed amendments to the Federal Trademark Dilution Act (FTDA) may eliminate some of the specific doctrines courts have used to cabin dilution. researchers suspect that the inescapable influence of marketing does more than change minds. The current shorthand for explaining why uses the language of economics: By interfering with source and quality signals.22 Marketers routinely define successful brands in terms of property – not in the trademarks. http://ssrn. III. 24 See Hotz. readily responding to the influence of experience.24 Precisely because of that malleability. as lawyers might. substantial swings in the success rate for dilution cases. supra note . at 1038. By contrast. but in the consumer herself: “[T]he strongest brands in the world own a place in the consumer’s mind. Just as practicing the piano or learning to read can physically alter areas of the cerebral cortex. and harms consumers. is a central asset whose management can determine whether the product is a success or not. Feb. Dilution. REV. confusion about source or sponsorship harms producers. This has produced. 22 23 See Robert Lee Hotz. we are only human in our tendencies to transfer positive associations from funny or appealing marks to the underlying products. Bird.com/abstract=903003. because the trademark serves as a shorthand for the qualities the consumer seeks. there is reason to claim dilution – or possibly even infringement. 5 . Mapping the Mind: Searching for the Why of Buy. It may alter the brain. If a defendant’s activities interfere with existing marketing-generated wiring. the intense. culminating for now in apparent disenchantment with dilution as a cause of action in most circumstances. as Clarisa Long has documented. The Appeal of the Internal Search Costs/Cognitive Model Everyone agrees that trademark infringement is harmful. Marketing can over time change neural wiring. Neural connections are constantly being strengthened and revised. there are always interlopers fighting for neural territory. and thus increases efficiency. A successful trademark regime decreases consumer search costs. deceiving them into buying unwanted and inferor products. SCOTT M. courts have struggled mightily to figure out what dilution is and what harm it does. shaped by networks of neurons acting in concert. TIMES. These orchestras of cells are surprisingly malleable.A. Moreover. 1029 (2006). see also Swann [Year 2002]. of which the trademark is a part. see id. BRAND ASSET MANAGEMENT: DRIVING PROFITABLE GROWTH THROUGH YOUR BRANDS 3 (2000). The Impact of the Moseley Decision on Trademark Dilution Law (May 17. As a result. 2005 (“”). decreasing their incentives to invest in consistent quality. See Robert C. which may lead her to understate the utility of dilution claims to plaintiffs. supra note . creating positive associations with a brand: Many seemingly rational decisions are reflexive snap judgments. Long evaluates only federal dilution claims. brand image.skeptical consumers. 25 See Clarisa Long. repetitive stimulation of marketing might shape susceptible brain circuits involved in decision-making. at 597-98 (discussing judicial distrust of dilution).”23 Yet learning never stops. at 8 (discussing several successful state-law-only dilution claims).
e. The cognitive processing definitions of blurring and tarnishment includes an explanation of why dilution is harmful.Enter cognitive processing models. Spreading Activation or Spooky Action at a Distance?. Nelson.” “help” will not be activated and “hello. and Jacob Jacoby. Meanings or concepts. 2002).” When we hear the rest of the word “hello. Blurring In Ty. since we process sounds in sequence. which slows processing time. The basic theory is that an unrelated. v. one of the nation’s most respected judges. 31 See Sevald & Dell. The Psychological Foundations of Trademark Law: Secondary Meaning. Judge Posner. 30 See. 27 See. Jacoby . are linked by mental networks.3d 509 (7th Cir.usf. nonconfusing mark similar to a famous mark adds new associations to a preexisting network. cognitive psychology confirms economic theory. until the consumer sorts out the proper referent. but in retrieving the mark in the first place. non-confusing associations in a consumer’s mind. Fame. supra note . triggering related meanings or concepts.” Swann [Year 2002]. from “activation at a distance. a prominent (if not always successful27) trademark expert.28 A. which deals with internal search costs – difficulties not in figuring out whether two products or services are from the same source. 1992) (rejecting Jacoby’s theories of dilution based on cognitive psychology as inapplicable to the present case). http://www. Words or concepts are “activated” through links in the network.edu/psychology/nelsonDouglas/SpookyActivatDistance. has seized on Posner’s explanations as confirmation of his framework for measuring dilution experimentally.g. Del. supra note . as when late-afternoon thoughts of home lead to thoughts of dinner. In the cognitive model. 1277. For example. 91 TRADEMARK REPORTER 1013 (2001). Barnes Group Inc. though opinionated. COGNITIVE PSYCHOLOGY AND ITS IMPLICATIONS 148 (2d ed. neighborhoods of words starting with an initial “he” sound will be activated when we hear “he-.31 Blurring involves relatively extended activation of two different meanings for a mark.29 a case about a website that sold Beanie Babies and other stuffed bean-bag animals. which relies on activation from associated words returning to the initial word. 1293-94 (D.pdf (distinguishing spreading activation. at 1019-20.” with its attendant meanings.30 Activation happens very fast. 6 . has ably set forth the fundamentals of the cognitive processing model. ANDERSON. will be. v.Supp. JOHN R. overview of cognitive psychology’s applications to trademark law.g. Connell Limited Partnership.. at 614. 793 F.cas.” a related model that posits that recall and recognition of words are aided by the number of connections between words even without a returning link). images. including sounds. the word or concept can die away. and if it doesn’t continue.26 They offer an attractive definition of dilution. one that creates a pleasing symmetry between dilution and traditional – now “external” – search cost models of infringement. blurring takes place when a single term activates multiple. 1985) (spreading activation causes “a good many associated concepts [to] become active” whenever an individual concept is explicitly invoked). at 110. e. He then contrasted infringement to dilution. Douglas L. 28 As Jerre Swann puts it. “Now. 29 306 F. supra note . Inc. see Jacob Jacoby. Perryman. Confusion and Dilution. Judge Posner set forth the standard search costs model that justifies protecting trademarks against infringement.. especially if the junior mark has a 26 For a general. happily. and other sensory impressions. Genericism.
activation of different meanings causes interference with each one. http://commdocs. 277. What the Right of Publicity Can Learn from Trademark Law. 74 FORDHAM L. Defining the Limits of Free-Riding in Cyberspace: Trademark Liability for Metatagging. Maureen A. 21 J.000/hju98924_0. The Heineken and Hyatt ads contained prominent disclaimers of affiliation with Heineken beer and Hyatt hotels. as they experience a more efficient market. 854-61 (2006). 1759 (2006). H. REV. Mark Lemley.to recognize the name as the name of the store.house. REV. Rep. at 1058-59 (identifying increased search costs as a harm to consumers. 35 Trademark Review Commission Report & Recommendations to USTA President and Board of Directors. Comment. and Hyatt legal services. 33 GONZ. LEGAL STUD.very different meaning than the senior mark. 790 (2004). REV. 913-18 (2004). 455 (1987). The ‘noise’ that this creates around the mark may increase consumer search costs. Trademark Dilution: Empirical Measures for an Elusive Concept. REV. Trademark Dilution on the Constitutional Edge. PUB. 306 F. 53 UCLA L. Thomas McCarthy.. 7 .36 The study had participants view diluting ads for Dogiva dog biscuits. REV.114 (1998) (“Dilution by blurring is concerned with preventing the erosion of the distinctiveness of the mark because of its use on non-related products. 727-28 (2004) (“[T]here is potential harm to both consumers and mark owners if a once-unique designation loses its uniqueness. 32 33 See Morrin & Jacoby. Dogan & Mark A. 77 Trademark Rep. Brian A. “Consumers will have to think harder -. Trademark Dilution. memorable.”). L. supra note . A Semiotic Solution to the Propertization Problem of Trademark. When Is Parody Fair Use?. at 267. The argument is that this makes it harder for consumers to link that designation with a single source--the hallmark of a strong trademark. 188 (2004) (“The mark holder surely benefits from the FTDA's preservation of her mark’s uniqueness. Note.”). Stacey L. 1161.”). J. 833.32 Like several pebbles thrown into a pond at once. Daniel Klerman.HTM. See also Richard A.”).”33 When they see “Tiffany’s. 67. cf. 713. 306-07 n. Dogan & Mark A. 34 See Stacey L. 75 (1992) (“A trademark seeks to economize on information costs by providing a compact. which would interfere with a consumer’s immediate recognition of the jewelry store Tiffany’s. and Naked Licensing. Michael Pulos. Posner gave the example of a high-end restaurant called Tiffany’s. The ads were “tombstone” ads – print-only and highly informational. Lemley. dilution increases the consumer's search costs by diffusing the identification power of that designation. 1197 (2006) (“[L]ike traditional trademark law. dilution properly understood is targeted at reducing consumer search costs. REV.34 The conclusion is that famous marks “are enormously valuable but fragile assets. Under this theory. “Which Tiffany’s”? A number of legal scholars have agreed with Judge Posner and explicitly identified the a harm of dilution as increased mental search costs for consumers.incur as it were a higher imagination cost -. Trademark Dilution Revision Act Of 2005. O’Rourke. but not to producers). 19 TOURO L.gov/committees/judiciary/hju98924. 375. susceptible to irreversible injury from promiscuous use. REV.”). L. Jacobs. Ty. but that draw on consumer recognition of the famous mark in a way that makes it more difficult over time for consumers to associate the mark with a consistent brand image. a person seeing it must think for a moment before recognizing it as the mark of the product or service. Victor Can Keep His Little Secret Unless Victoria's Secret Is Actually Harmed. 875.”). Lemley. at 43 (“The owners of some famous trademarks must contend with a host of uses that may not confuse consumers. and Intellectual Property of the Committee on the Judiciary. Testimony Before the Subcommittee on Courts. 41 HOUSTON L. REV. Trademarks and Consumer Search Costs on the Internet. 41 HOUS. ultimately raising consumer search costs. Shafeek Seddiq. 19 J. Search Costs. but consumers also benefit. 777. 161.”35 In 2000. Maureen Morrin and Jacob Jacoby conducted an experiment that can be used to bolster the internal search costs model. Long. 36 See Maureen Morrin & Jacob Jacoby. 104 COLUMBIA L. 58 STAN. Posner. because the trademark has other associations. Heineken popcorn. Proving a Trademark Has Been Diluted: Theories or Facts?.3d at 511.” they will have to stop and ask themselves. and unambiguous identifier of a product or service. L. the Internet. Note. supra note . The economy is less when. POL’Y & MARKETING 265 (2000).
37 Exposure to dilutive ads led to average response times of 770 milliseconds before respondents recognized the senior brand as fitting in its category. the new dilution story creates new opportunities. though noting that their study was not designed to measure search costs). such as linking GODIVA to chocolate and rich taste. supra note 610-11 (relying on Morrin & Jacoby). Like any translation. MARKETING 52 (2006).”41 One could argue that these formulations simply represent the formalization of earlier concepts of diminishing the selling power of a mark42 and their translation into the language of law and economics. supra note .respectively. Long. at 603-04 (because consumers’ lives are so hectic. By providing “numerically quantifiable impacts of the dilutive brand on consumers.112 (citing Morrin & Jacoby). and also required to retrieve the brand name when presented with the brand’s distinctive aspects. HEINEKEN was similarly affected by ads for Heineken popcorn. at 1035 (discussing change in judicial explanations of dilution towards a consumer focus). Computers measured participants’ response times – that is. not a simple power grab by trademark owners. at 14. they need help from strong. is the same thing as “slowing or interrupting the ability to recall either a brand or its associations. supra note . and it seems natural that internal search costs would also decrease 37 See Morrin & Jacoby. 41 Bird. “[L]essening of the capacity of a famous mark to identify and distinguish goods or services. supra note . A not inconsiderable advantage of the search costs explanation of blurring is that it converts dilution into a protection for consumers as well as for producers. dilution doctrine seems more palatable from a policy perspective if it does something positive for consumers rather than just protecting the property interests of proprietors of famous trademarks. we know that external search costs are inefficient and therefore welfare-diminishing for consumers.8% of the time compared to 92.1% who’d been exposed to [no ad/beer ad]. supra note . 44 See Graeme W.. supra note .38 Jacoby now explicitly links his cognitive model to Posner’s internal search costs formulation. Austin. which dilution law protects). Other researchers conducted paper-and-pencil version of the experiment using aided recall. 40 15 U. cf. § 1127. at 269. Survey participants exposed to Heineken popcorn agreed that Heineken was a beer 82.44 After all. and 836 milliseconds for those exposed to Heineken popcorn or Dogiva. 42 [Schechter] 43 Bird.39 The link from psychology to economics to law is now complete. at n. though HYATT was not affected by ads for Hyatt legal services. 891 n. supra note . Trademarks and the Burdened Imagination. so that respondents were required to retrieve distinctive aspects of a brand when presented with the brand name. 38 See Chris Pullig et al. 8 . 69 BROOKLYN L. supra note . how long it took for them to identify the senior marks after exposure to the junior marks. REV. Morrin and Jacoby found that exposure to dilutive ads slowed participants’ accuracy and response time in associating some brands with product categories and attributes. The results also showed measurable effects. Long.S. Swann [Year 2002]. 39 See Jacoby . at 3. unique signals that simplify messages. 70 J. see also Klerman. 827. at 1764-65 & n.”). Brand Dilution: When Do New Brands Hurt Existing Brands?. however.”43 it proves that dilution is a real problem.24 (discussing Morrin & Jacoby. at 16-17. supra note .C. Excluding Hyatt led to 672 millisecond reaction times for those exposed to senior brands. Swann [Year 2002]. versus 675 milliseconds after exposure to an ad for the senior brand and 748 milliseconds after exposure to unrelated ads.”40 the language of the FTDA. 276 (2004) (“Certainly. 713 milliseconds for those not exposed.
”)..”). 47 See Moseley v. that mark activates associations to restaurants. e. for the moment. As discussed in Part II. even though it’s not rational to think less of Tiffany’s-the-jeweler because of the existence of the strip club Tiffany’s (or.52 45 See. 905 (9th Cir.48 Judge Posner posited a strip joint named Tiffany’s. MCA Records. emotion is key to cognition. 51 See. at 110.S. 537 U. breasts. however. 108 YALE L. See supra at text accompanying note .. with substantially less attention paid to tarnishment.efficiency. including trademarks. No matter what people consciously believe. 49 Id. 429 (2003) (“Unlike traditional infringement law. in which he found the FTDA less justified than infringement law because it served only trademark owners’ interests and did not protect consumers. e.”49 This “inveterate tendency” can be equated to the psychological concept of activation. Stiffany’s). Perception of words or images. Inc.50 Tarnishment is probably a more intuitively obvious concept than blurring. 418.47 B. and are not motivated by an interest in protecting consumers. THE DEVELOPING MIND: HOW RELATIONSHIPS AND THE BRAIN INTERACT TO SHAPE WHO WE ARE 159 (1999). Inc. 1704 n.90 (1999) (“The information consumers can obtain and process is in part a function of how clear the association between mark and product remains in their minds. Tiffany’s-the-strip-joint will become a branch on the tree of associations connected to Tiffany’s-the-jeweler. supra note . more likely.46 The Supreme Court.3d 894. even measurable harm. id. 48 Reading or hearing the name will also activate mental pathways to a “lexical neighborhood” of words with similar beginnings. 9 . at 511. 46 See Mattel. 296 F. Nevertheless.”). activates a web or tree of concepts linked to them. dilution by tarnishment also involves interference with cognitive processing.91 (“Properly conceived. V Secret Catalogue. 2002) (“[D]ilution law protects only the distinctiveness of the mark. v.. and assumed that reasonable consumers do not think it has any connection with the jewelry store. sexual harassment. ‘clutter’ therefore imposes real costs on consumers. as evidenced by the considerable debate in the literature over what blurring is. In my mind. I think dilution law is protecting consumers against a real harm: the loss of the informational value of a famous trademark through crowding. at 1705 n. Take a suggestive (pun intended) mark like HOOTERS.”). which is inherently less weighty than the dual interest of protecting trademark owners and avoiding harm to consumers that is at the heart of every trademark claim.51 meaning that negative associations may do real. The Modern Lanham Act and the Death of Common Sense. but of a different kind. Sevald & Dell.J. “because of the inveterate tendency of the human mind to proceed by association. and it will bear poison flowers. 1687.45 Thus. Mark Lemley. owls. the color orange. Tarnishment In Posner’s model. SIEGEL.g. every time [people who know about the strip joint] think of the word ‘Tiffany’ their image of the fancy jewelry store will be tarnished by the association of the word with the strip joint. but it has not had the occasion to address the search costs argument directly. and a variety of other concepts of which I am not consciously aware. has sided with Judge Kozinski. 50 See supra note  and accompanying text. DANIEL J.. a focus on the workings of the consumer’s diluted mind produces a response to Judge Kozinski’s more skeptical take on dilution. Inc.g. though as I make progress at identifying the precise word at issue those activations will die out. the prohibitions against trademark dilution are not the product of common-law development.
such as images of revered African-Americans and reviled whites to counteract racial bias. Irene V. PERSONALITY & SOC. Study participants were shown either an ad for Michelob Dry or the mock ad for Michelob Oily. to take what is probably a better example of tarnishment. By contrast. provides a prime example of tarnishment. Anything else?” Thirtyseven percent of those shown the Michelob Oily ad “associat[ed] a negative meaning with Michelob or Anheuser-Busch. PSYCHOL. women. 81 J. overwhelming past positive associations. compared to seven and five percent. PSYCHOL. “What was the main idea of the ad/communication you just looked at? Please tell me everything else you can remember that the ad/communication said[. both trademark-related and non-trademark concepts should be activated when we see the word. because they both apparently involve a proliferation of associations. With a pre-diluted mark like APPLE or AMERICAN. of those who saw the Michelob Dry ad.at 1061. Now. it’s possible to change reaction times by exposing people to negative images of whites and positive images of African-Americans – at least for a time. rather than being mediated through a second product – 52 Related evidence comes from studies of racial stereotypes. Balducci v.54 These negative meanings attach to the senior mark directly. 54 See id.g. a case involving a mock ad for Michelob Oily. and twenty percent said they were less likely to drink it. showing Tiffany’s in distasteful situations might have similar effects. reference to Tiffany’s-the-jewelry-store activates both positive concepts of beauty and wealth and negative concepts of violence and exploitation.] showed or meant to you.53 Twenty-two percent said the Michelob Oily ad made them less likely to buy Michelob.” while no one who saw a Michelob Dry ad did so. As we recognize the reference to the trademark. On the Malleability of Automatic Auttitudes: Compating Automatic Prejudices with Images of Admired and Disliked Individuals. dilution by tarnishment involves spreading activation to negative concepts that should stay active when the consumer thinks of Tiffany’s-the-jewelry-store. See. at 1060.Though there is room to characterize tarnishment as a subset of blurring. Nilanjana Dasgupta & Anthony G. PERSONALITY & SOC. unrelated concepts will not be further activated and will die away.. 81 J. they are hundreds of milliseconds slower and make more mistakes when asked to do stereotype-inconsistent matching. Tarnishment would mean that the idea of Tiffany’s-the-strip-joint remains at least slightly activated after a reference to Tiffany’s-the-jewelry-store. according to Jacoby. Imagining Stereotypes Away: The Moderation of Implicit Stereotypes Through Mental Imagery . Likewise. Though it was decided on confusion grounds. This is also what should eventually happen with dilution by blurring – because there’s no confusion. complete with images of blood and slaughter. 828 (2001). 10 . Blair et al. Fifty-five percent thought the mock ad suggested Michelob was contaminated with oil. decreasing the overall positive value associated with Tiffany’s-the-jewelry-store. supra note . 800 (2001). They were asked. 53 Jacoby . Greenwald. depending on how primed we are by context. But those unconscious difficulties can be altered – still unconsciously – by exposure to inconsistent information. gays) with words that are inconsistent with stereotypes associated with that group. concepts of Tiffany’s-the-jewelry-store activated when we see “Tiffany’s” will fade as the mind recognizes that the subject of a particular reference is Tiffany’s-the-restaurant. Or. consider an ad campaign accusing Tiffany’s of complicity in selling conflict diamonds. Even with entrenched biases like those associated with race. tarnishment involves persisten associations with the senior mark. It’s well-established that most people have difficulty associating words that describe people from a group (blacks. respectively. Anheuser-Busch.. e.
Lynda J.57 But brain matters are not so simple. Hannibal Travis. People in Kuala Lampur know about the jewelry store but would never patronize it. f (1995) (“Direct evidence of a dilution of distinctiveness is seldom available because the harm at issue is a blurring of the mental associations evoked by the mark. Moskin.g. as produced in the Morrin & Jacoby study. Alexander F. 150 (1993) (“To date. it becomes possible to imagine an empirical search for that increase – although Judge Posner didn’t. supra note . L.”). Rev. C. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 cmt.” in which case the right answer would be “ponds. A subject might see “One pond. 118 Harv. 306 F. some commentators would say nigh-well impossible--to obtain”). The example is a Tiffany’s restaurant is in Kuala Lampur.59 Consider the following findings by Kevin Shapiro. This definition focuses on the mental processes of the junior user’s customers.. e. & TECH. Inc. 122. “Tarnishment” and “Blurring” under the Federal Trademark Dilution Act of 1995. so no jewelry store customers have their mental models of Tiffany’s distorted in any way. though at least one subsequent case treated it as a third equally plausible theory of dilution under Seventh Circuit law. behavior. not the senior user’s. 57 See.J. 58 See Jerry Kang. dilution has been explored almost solely by reference to intuition. even life-and-death.8 percent 55 56 See id. 59 See Klerman. Perryman. 255. at 1765 (arguing that an increase in 125 milliseconds. a phenomenon not easily sampled by consumer surveys and not normally manifested by unambiguous consumer behavior. which grabs some of the luster of Tiffany’s-the-jeweler because of the same tendency to make associations that explains tarnishment. which is simply free riding. L. L.” “Surprisingly. Free Riding Finally. 36 AM. who used MRIs to measure response times for completing sentences. Jerry Kang has persuasively argued in the context of race that differences of a few hundred milliseconds have powerful correlates in readily observable. Oswald. 112 (2005). 149.”). Simonson. J. 535 (7th Cir. How and When Do Trademarks Dilute: A Behavioral Framework to Judge “Likelihood” of Dilution. Dilution or Delusion: The Rational Limits of Trademark Protection. BUS. See Ty. at 512. 123 (1993) (most cases find dilution without “meaningful empirical proof”). Trojan Horses of Race. 11 . 83 TRADEMARK REP.an important point about the likely uses of tarnishment doctrine against criticism of trademark owners. 283 (1999) (empirical evidence of dilution is “typically difficult--indeed. Posner offers a third possible meaning of dilution.3d 509. IV. 2002) (opining that it was not clear “what question could be put to consumers that would elicit a meaningful answer” about dilution).56 This is easy to see as a major advance over previous concepts of dilution. 3.55 Posner is dubious about this rationale. The Battle for Mindshare: The Emerging Consensus That the First Amendment Protects Corporate Criticism and Parody on the Internet . 10 VA.’ after seeing ‘one wagon’) were actually longer than for tasks using more abstract words (saying ‘many sounds’ after seeing ‘one sound’) – 1. v. isn’t economically significant). Jonathan E. the response times for tasks using concrete words (saying ‘many wagons. reaction times aren’t meanings. Problems with the Cognitive Model of Dilution Once the harm of dilution is reformulated as an increase in consumer search costs. 1489 (2005).” followed by “Many ____. 83 Trademark Rep.58 Still. which generally relied on intuition or ipse dixit.
And when we’re primed with a context. they did not supply subjects with the context that exists in the real world. [discuss further] 63 See Austin. 61 See Pullig et al.62 As a result. Consider: Have you ever gotten into a cab in a major U. showed less effect of dilution. 103 PROCEEDINGS OF THE NATIONAL ACADEMY OF SCIENCES 1644 (2006). HARVARD MAGAZINE. 276 (arguing that Posner failed to identify harm from a higher imagination cost. Dogiva ads don’t appear next to. city and asked for “American” or “United” and gotten the response “Which one?”66 No rational cab driver would take a person who said “American” to the local American Apparel. at 891 n. but they still showed some effects. 2006. or a person who said “United” to the local United Van Lines..” even though it’s a classically pre-diluted mark.longer with nouns and 3. such as ORGAN/music. perhaps because they demand that respondents do more mental and physical work. Neurons Sort Nouns. You are not being asked for political or historical opinions. supra note . 12 . Paper-and-pencil tests of recall.S. supra note .65 When context is king. or even five minutes separate from. Shapiro et al. 62 For an attempt to overcome this difficulty by assessing dilutive effects after a delay of several days. suggesting that semantic differences between two separate uses of an identical word can be separated. With blurring. like “computers. Godiva ads. Proof that response delays persist over any appreciable time is limited. the result of the existence of Tiffany’s-the-restaurant is that we need more context to figure out which Tiffany’s someone is talking about.8 percent longer with verbs. see Pullig et al. the word didn’t cue inconsistent meanings (ORGAN/body part). supra note . Cortical Signatures of Noun and Verb Production. The cab driver experiences no 60 Elizabeth Gudras. Context Effects In the Perryman case. see infra notes - and accompanying text. This is so even though AMERICAN and UNITED are conceptually weak. In other words.. at 5-6.63 In fact. July-Aug. he did not define what it means to think harder.] 66 Though you might be asked “LaGuardia or JFK?” – another question that depends on your understanding the referent.61 Yet in the real world. 64 See Shuy.”60 Does the shorter response time for abstract nouns make them less diluted and thus more powerful than concrete nouns? The Dogiva biscuits delayed recognition of Godiva chocolates by 73 milliseconds compared to people who hadn’t seen any other relevant ads and by 129 milliseconds compared to people who’d seen Godiva ads. supra note . A. dilution loses much of its theoretical appeal. Judge Posner did not explain why it was a problem for consumers to have to think harder to figure out the entity to which “Tiffany’s” refers. given that we routinely tolerate the imagination cost of multiple references. context allows pre-existing associations to reinforce each other so that computerrelated meanings of Apple are more strongly and effectively activated in an Apple ad and fruit-related meanings are activated at the grocery store.. as opposed to recognition. This complicates the cognitive model’s claim that phonological similarities lead to interference with the meaning of both uses. 16. such as the numerous trademark and non-trademark uses of “apple” despite the famous APPLE trademark). at 15. diluted marks. but we generally have that context. 65 [Study on priming with words with multiple meanings – when primed with one context. Because Morrin & Jacoby did not use a standard ad context for their tests.” “Apple” doesn’t seem any harder to recall than “Microsoft.64 We don’t sit around thinking and waiting for random words like “Microsoft” to pop into our minds. the fact that split-second differences in recognition exist in laboratory tests says little about ultimate effects on buying and selling. See Kevin A.
see also Swann [Year 2000]. Meyers-Levy.68 In other words. and a brand with a substantial meaning only in context or after cueing. Half of the brands with typicality over 90% showed low levels of dominance. it is reasonable to expect them to keep on doing this with trademarks. see also Daniel J. 19 J. nineteen of which were also leading in 1985 (the other two were in second place). Trademark Dilution and the Practice of Marketing. surveyed major product categories and trademarks. at 1765. 71 Klerman. including SWIFT. B. Since humans commonly use context to disambiguate and figure out what is meant. Both could retain their uniqueness and singularity within the sphere of their uses. supra note . The Effects of Brand Name Similarity on Brand Source Confusion: Implications for Trademark Infringement . at 429. consumers may still identify it as a beer if they’re prompted with the category. Consumers just do not confront trademarks in the abstract very often …. supra note . these marks “are bound to be associated with or call to mind things other than the products they identify. which was the form used in the Morrin and Jacoby study. 261 (2000) (in situations of high involvement. 72 Hartman.”). and a variety of personal names. supra note . Moreover. it will be right there on the shelf. See id. 261 (1999). In the abstract. as compared to recall). on average three times greater. Leading brands’ typicality was much greater than their dominance. examining typicality (the extent to which naming a brand caused a respondent to produce its major product category. Shuy does think dilution might be possible in context-free environments. at 6. and when they go to the store to buy beer. Pub. supra note . LIFE SAVERS.”72 Context has been enough to keep them strong as marks. See id. 70 See Klerman. because of his knowledge of the places that people ask cab drivers to go. the differences between recognition when prompted with a brand and recognition when prompted with a category may have significant real-world effects. Steve Hartman examined twenty-one trademarks that were the leading brands in their product categories in 1925. that consumers’ ability to remember brand attributes when prompted with the brand name is crucial to brand value. Peterson et al. “Words in isolation seldom occur in our lives.”67 Robert Peterson et al. 255. 27 J. marks are easy to recognize as category members without being at the top of a respondent’s mind in the category. in itself. This implies. except in spelling bees and grocery lists. Anecdotal evidence from the market further establishes that marks can be strong without being unique. at 1765-66. ACADEMY MARKETING SCI. at 3000 (association set size has little effect on recognition tasks. supra note . All but four had non-trademark meanings.70 “It is hard to think of situations where consumer search is aided by the ability to remember the product category associated with a brand. as McDonald’s would produce “fast food”) and dominance (the extent to which naming a product category caused a respondent to produce the first brand that came to mind). IVORY.”71 They certainly don’t encounter many tombstone ads focused on product information without images or logos.69 Even if the Heineken name in the abstract produces less association with beer because of Heineken popcorn. 13 . see also id.”). as Klerman notes. at 7 (“What polysemy says about trademark dilution is that the mere presence of two identical marks does not. Howard et al. as when a purchase actually turns on a decision. 69 Cf. 68 See Robert A. at 262. Association Sets and Uncommon Words 67 Shuy. at 759 (“Dilution is … the difference between a brand with a meaning substantially in the abstract. at 6.significant search costs. consumers process more brand-related information than when they are just looking at ads). guarantee that one is diluting the other in the perception of consumers. Pol’y & Marketing 250. some types of dilution could interfere with that ability..
alterations in original). a source of joy. Cerebyx. supra note . Symbyax. See Meyers-Levy. a well-known trademark practitioner and former editor of The Trademark Reporter.” Swann has skipped a number of related meanings. 14 . ‘Some empirical research has shown[. Swann’s citation to the work of Joan Meyers-Levy supposedly shows that increasing the association set size of a brand decreases the consumer’s ability to retrieve any particular concept. 37 Hous. Swann. high-frequency words are easy to process. a rehearsed phrase or jingle shouted in unison. The noun alone can mean lightness of spirits. 2000). at 201. supra note . though Swann applies her work to change over time. has been a major proponent of using cognitive theories to justify and define dilution. she compares words with existing high and low measured frequency and association set sizes.g. 73 Jerre B. 75 Association set is defined as the number of words that are named by at least two people when a large number are asked the first word that comes to mind in response to a target word. If they’re used as brand names. 755 (2000) (citing Joan Meyers-Levy. Dilution Redefined for the Year 2000. Rev. Unless a dilutive use was the first thing that came to mind. Meyers-Levy offers Ivory as an example of a low-frequency word that therefore relates strongly to shampoo. a use that takes a word from low to high frequency obviously creates a branding problem. L. meaning that we don’t pay much attention to them. Note also that Meyers-Levy does not actually measure change. Consumer Res. He cites psychological studies to show that adding unrelated associations to a famous mark causes dilution and interferes with consumers’ ability to retrieve the mark because “‘“[R]are words [like KODAK] are more distinctively encoded than (are) common words. it would not affect this measure of association. can likewise be readily retrieved….] that the greater the number of associations a word has (the less distinctive it is)[. and there are a couple of problems with them.77 So. 77 See Meyers-Levy. a shout of joy. though it does correspond to the legal concept of “inherently distinctive. 76 There is already a bit of a conflict here with the idea that trademarks exist to make things easy for consumers. and the verb has both transitive and intransitive forms. at 198. their phonological uniqueness has little meaning and in fact may make them forgettable. The Influence of a Brand Name’s Association Set Size and Word Frequency on Brand Memory.’”73 All those quote marks are there for a reason – Swann is extrapolating from a study that itself extrapolates from non-trademarks to trademarks. 729. Unpacking this. on the other hand.”’ and words that have a limited number of ‘association set[s]’ (e. As for “cheer.74 I belabor the point because we have no particular idea how many associations it takes to give a word a “large” or “small” set. 197 (1989). 16 J.Jerre Swann. Kodak and Cheer are his additions.] the more difficult it is for the individual initially to encode the word in memory or later to recall the word. “Cheer” for an encouraging shout and an all-temperature detergent). and thus we don’t encode them distinctively.” Consider some drug names: Xalatan. especially when we’re comparing non-trademark apples to trademark Orangina. and thus we process them more meaningfully. we’ll have trouble remembering the brand..75 Dilution thus makes it difficult to recognize the unique attributes of famous brands.. Unless you know more about them. 74 See AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. and festive food and drink (not to mention the “Bronx cheer”).76 Low-frequency words are relatively difficult to encode. Sr. “Distinctively encoded” here is not the same as famous.
for high-freqency brand names. I aggregated variants (229 coke. Room.asp?PID=682 (July 12. 82 [Replace with US English when it arrives. Then they were asked to recall and write down all statements they could remember from the ads.82 In the 2003 release of the American National Corpus. I divided the number of instances of a word in the first release by 11. See Possidonia F. because their attention will only be drawn to those specific attributes of the word (for Ivory. Words and Hemispheres. instructed that some might be “impostors. 84 See Sony on Top in Annual ‘Best Brands’ Harris Poll for Seventh Consecutive Year. but a more important thing to note is that low-frequency words are still quite recognizable.org/frequency. Shove. and those plainly include some non-mark uses such as personal names and generic words. and Round razors. at 202.”78 Meyers-Levy experimented with fictitious antiperspirants. The logical flaw is the assumption that famous brand names are high-frequency.81 That sounds like good reason for marketers to minimize the associations evoked by their famous brands. grammatical. The American National Corpus is not a random sample. 2006). only 7726 words occur at least ten times per million (which would be one use in a 300-page book). In the British National Corpus. The closest were ford (roughly 43 uses per million words) and apple/apples (roughly 30 per million). and Round.83 none of the top ten brands in the Harris Poll’s 2006 Best Brands list had frequencies approaching one hundred per million words. with a low-frequency word.216 words. it didn’t make a difference. Cork. The first release contains 11. they were shown lists of brand names. 8 coca-cola).5.] 83 See http://americannationalcorpus. at 78 79 Meyers-Levy. like proper names. 2006). Moose. “Indeed.html# (visited Aug. and professionally written the ads were. but given the numbers at issue. recall was greater (both immediately and at 24 hours) for words with a small association set size.” and asked to indicate whether they recognized the brands. The results showed that. 15 .79 One might wonder about the selling power of Yard antiperspirant. color and not elephants). Low-frequency words (fifteen or fewer uses per million words) were Crisp. which is a similar endeavor. Day. at 201. Research indicates that.When a word is low-frequency. and disposable razors. With lowfrequency brand names.com/harris_poll/index. assembled from large samples of spoken and written English.html (visited Aug. Cloud blemish medication. supra note . Thus.harrisinteractive. How Brand Names Are Special: Brands. See http://americannationalcorpus. it is possible that memory might be somewhat enhanced as the size of the association set increases [for low-frequency words] because more associations will be available to related meaningfully to the brand in a distinctive manner. at 199. See id. even a large association set size won’t interfere with memory. and Dusk. but it is the best available corpus for American English. a particular use will only cause people to encode other relevant information presented in context. blemish medications. Cloud.org/FirstRelease/contents. Bribe. Then. choosing brand names from words with known frequencies and association set sizes. recognized brands are processed differently in the brain from ordinary nouns. Gontijo et al. 82 Brain & Language 327 (2002). High-frequency words (one hundred or more per million) were Yard. http://www.80 Experimental subjects heard ads for products. In some cases. To get rough estimates of frequency per million. Lake.508. showing more lateralization. 3. 3. 2006). and instructed to consider how clear.D. 80 Using invented brands with common nouns may have distorted the results in other ways.. 81 See id.84 The only mark I tested in the American National Corpus that had a high frequency was Microsoft. 205. recall was similar regardless of set size. which they were told were existing regional brands. 8 cokes.
among other things. or reference to one word may “prime” us to recall a similar word. and Tide and Sunlight for detergent). Playful use of language. 85 See Antonia Kronlund. 89 [Dairy Queens.85 Meyers-Levy’s work. but they don’t get tired of Coke in the same way. 86 See Meyers-Levy. and easier to recognize common words than uncommon ones. 72 U. then. supra note . Coke and Pepsi for soda. rather than chip away at. Brand Equity Impairment – The Meaning of Dilution.”) (citing MARY M. Trademark owners deal with this by changing their ad campaigns.pdf (visited Aug. may be especially reinforcing. Comment. 1994)). use of a similar brand name could actually benefit the original brand by activating the memory of the original brand in a viewer’s working memory. 2. Bradford. 2006) (brands tested included Camel and Marlboro for cigarettes. found that popular brands were recognized with a speed and accuracy consistent with speed and accuracy of low-frequency words. See Rik Pieters et al. L.sfu. as courts have occasionally hinted at when finding humorous uses nondiluting.roughly 97 uses per million words. Reaffirmation Effects There are reasons to think that at least some dilutive uses can reinforce. humor as reinforcing original rather than blurring] 16 .. www. Bradford also points to research indicating that oversaturation eventually reverses the likability effect.. supra note . Remembering Words and Brand Names After the Perception of Discrepancies . The source of backlash. at 331 (familiar brand names were recognized more slowly and less accurately than common nouns with frequencies of 100-160 per million. we do very much like to play with language. at 32 [nn. 48 MANAGEMENT SCI. 36 J. see also Gontijo et al.. can be read to suggest that dilution does not harm many trademarks.86 Tiffany’sthe-restaurant may make us think of Tiffany’s-the-jeweler’s when we are sitting at lunch thinking of where we’re going to buy gifts for Mother’s Day. Breaking Through the Clutter: Benefits of Advertisement Originality and Familiarity for Brand Attention and Memory.87 Marketers and language researchers alike agree that familiarity is incredibly important.] [Hormel/Spa’am. Hyatt was at one use per million. 1038 (2004) (“Arguably. A Dilution Delusion: The Unjustifiable Protection of Similar Marks. at 32. 765 (2002) (finding that the best advertisements combined familiarity and originality). 1023. MARKETING RES. and Godiva and Heineken were below one. as people get annoyed by the millionth repetition of an ad. the strength of a mark. Conjuring up the image of the original brand in this manner can further implant that brand in the memory.88 It’s easier for people to recognize words than non-words. capitalization increased speed of recognition). Maureen Morrin. and dilutive uses are likely to provide variety.199-201]. Any delay in recognizing which Tiffany’s or which Apple a particular use refers to may be compensated for by easier recall of Tiffany’s in other contexts. Variety is the spice of advertising. CIN. 87 TRADEMARK REPORTER 418. as Bradford notes. 88 Familiarity increases likability. Wa-Wa/Ha-Ha. 424 (1997) (second use of a mark in a different product class may serve as a reminder of the first mark). REV. at 197 (“American” is a memorable brand for airlines because of the diverse meaningful concepts already associated with it). Words with multiple associations may be more easily activated. is “unvaried” exposure.89 Although people don’t like information overload.ca/~amantona/Kronlund. SMYTH ET AL. Steve Hartman. which is involved in many dilution cases. supra note . etc. COGNITION IN ACTION 270 (2d ed. because adding associations to low-frequency words doesn’t interfere with retrieval or recognition and may even help. C. though it did not use frequency counts for brands. 517 (1999) (brand extensions can improve retrieval of core brand). 87 See Chris Brown. See Bradford. People get fed up with repetitive scripts. One psychological study. supra note . The Impact of Brand Extensions on Parent Brand Memory Structures and Retrieval Processes. Levis and Wrangler for jeans.
multiple associations make it bigger. generating rhymes for that word. 92 See Joan Meyers-Levy. See A. dilution wouldn’t be a concern. Easy examples come from brands popular with parents that are therefore unpopular with their children. See C. If a brand is successful at creating a consistent image.“Elaboration” of a word. Even dilution’s defenders posit that each consumer has a different web of associations connected to a famous brand. Other studies show that a rhyme such as PICK/TICK can facilitate word recognition and distinction. But. 30 MEMORY & COGNITION 380 (2002). recently activated pathways are easier to reactivate. Phonological Similarity and Trace Degradation in the Serial Recall Task: When CAT Helps RAT. 16 J. possibly justifying some version of an actual harm requirement: This paper began with evidence that first impressions matter. Experiencing a Word Can Prime Its Accessibility and Its Associative Connections to Related Words . supra note . 91 Brown. But a trademark gets new chances to make first impressions all the time. at 166-67.. But Not MAN. A final point.A. which improves availability in a well-forested mind.S. First impressions can be overcome by providing more 90 See Brown.93 In a trademark case involving the world-striding brand McDonald’s – which has employed one of every eight Americans and feeds 26 million Americans a day – twenty percent of survey respondents associated “Mc” with negative concepts. exposure to near variants or uses in other contexts makes the trademark more familiar and thus more easily retrieved from memory. Sevald & G. “the mental processing involved in interpreting the nature of the pun on Federal Express incorporated in the name Federal Expresso could actually do more to assist a person’s future recall of Federal Express than just seeing a sign with the brand on it.188-90]. PSYCHOL. many of those associations will be the same across consumers. By adding branches to a trademark’s mental tree. the associations of a famous mark are controlled by a single source – the tree is carefully pruned. CONSUMER RES. [Holiday Inn case].”91 Studies suggest that multiplication of associations aids recall of trademarks comprising uncommon words. Goodmon. but there’s nothing (as yet) that Coca-Cola can do to erase my memory of the time I spilled a Diet Coke into my keyboard. supra note . Fallon et al. because later exposure to a dilutive use could never shake the hold of the first impression of a famous mark. Nelson & Leilani B. The Influence of a Brand Name's Association Set Size and Word Frequency on Brand Memory. at 31 [n. Douglas L.94 Multiple associations are inevitable and not completely controllable. supra note . Dell. 53 COGNITION 91. 110 (1994). The marketers seizing on useful existing terms for their products are using that reality to their own advantage. 197 (1989). A trademark can have a consistent meaning to one individual that differs from its consistent meaning to another. This process can add value in the same way that marketers think preexisting associations carried by descriptive or suggestive terms add value to a trademark. for example. Rhyming words also produce better performance on short-term memory tasks compared to phonologically similar but nonrhyming words.92 In essence. supra note . 93 Clever proponents of dilution theories slide between the individual and the group when discussing brands as shortcuts that only work if their images remain consistent. at 103. 34 INT’L J. If that were not so. while dilution proponents want to fight it. depending on his or her experiences. See Bradford. at 1038-39. improves memory by increasing the subject’s involvement in processing and by providing redundant paths for retrieval of the initial word. and from the rise of “my” brands like MySpace. 173). 17 . dilution proponents will respond. It is unlikely that psychological evidence will ever bear this out.B. 301 (1999). The Sequential Cuing Effect in Speech Production.90 As one commentator argues. 94 See SHUY. which offer a personalized experience for each user. supra note . at 1038 (quoting Anderson.
”). Interestingly. aff’d 45 F. 984. 98 Indianapolis Colts.”98 Slight differences in wording produce very different answers. at 266.” but the survey specifically asked them if they knew a place outside California that identifies its hole as a “Pebble Beach hole. See Swann [Year 2002].” In other words. can reinforce the original against any threat. Swann and others can’t agree on whether Hyatt resists dilution because it’s so strong or because it’s so weak. Pinehurst #2. supra note . 99 Some of the more striking findings on this point are taken up in MALCOLM GLADWELL. 87% mentioned it as one of the five most famous golf courses in response to an open-ended question.95 The repeated exposure point is important because trademark cases are. Peterson. by definition. the survey asked for retrieval of the junior use.97 This suggests that legal protection for strong marks is unnecessary. He claimed to have found dilution because about three-fourths of people surveyed. unfortunately.3d 410. Procter & Gamble. suggests that it is even harder to figure out what consumers think about brands through conventional surveys than practitioners believe. See Jacoby . For Heineken and Hyatt. at 610 n. BLINK: THE POWER OF THINKING WITHOUT THINKING (2005). v.information. though it was ultimately decided on confusion grounds. Metropolitan Baltimore Football Club Ltd.D. The questions themselves may change a respondent’s answers. Other Problems in Empirically Assessing Dilution Surveys that don’t use MRIs will likely remain dominant in trademark law for a while. and by repeated exposure. at 180-81 (asking “why” questions distorts 18 . all of whom had gone to Tour 18’s golf course. leading courts to suspect that some trickery is going on. at 28-29.Y. supra note . were 25% and 92%. 845 F. 34 F. Reaffirmation of the original meaning of a trademark in continuing ads. id. at 272 (“Some brands. 995-996 (S. Partnership. now thought that there were two different places to play a “Pebble Beach hole.” Pebble Beach and Tour 18’s hole mimicking the layout of a hole at Pebble Beach.6% ranked it in the top 100 when specifically asked about it. Although the Morrin & Jacoby study never exposed participants to ads for both the senior and junior user. Jacoby . about exposure over time. it’s notable that the Godiva ad decreased response time and increased recognition accuracy by over 20% compared to the no-relevant-ad control. by triggering conscious thought. leading her to think in ways that she would not in the absence of a request to think about her reasons for believing something. if only because MRI studies are even more expensive than standard trademark surveys. Inc. Surveys in Lanham Act cases have long been criticized as products of “the survey researcher’s black arts.3d 709 (2d Cir. supra note . See Morrin & Jacoby. and shows no evidence of any effect on the senior user’s brand. D. certain well-known brands resist dilution entirely. but not by much. 97 See Morrin & Jacoby. exposure to reinforcing ads actually decreased accuracy compared to no-exposure. at 269 (Hyatt). such as Continental Airlines. whereas Dogiva decreased accuracy by only 5%. (The corresponding numbers for another plaintiff. even though subjects weren’t shown any additional ads for the senior mark.99 Being asked to give reasons. 1995). 1994). Supp. are so familiar to consumers … that recall of the original product category is largely immune to trademark dilution. at . Yet among those diluted respondents. especially when the 95 96 See [Gladwell last chapter]. Another of Jacoby’s examples of dilution can also be read as an affirmation of strength. at 229. 416 (7th Cir. and 99.165. in the dilution experiments.N. The problem with surveys may be even deeper than the difficulty of wording a question to avoid bias. supra note .96 Indeed. as for Coke. See id. See also L&F Products v.) Jacoby found blurring because Tour 18’s customers think there are two places to play a “Pebble Beach hole. 1994) (noting that survey experts “possess technical and linguistic skills” that can “structure the language and methodology of a survey to produce the most favorable possible results for a client”). Jacoby did a dilution survey in the Pebble Beach case. But research on cognition.
Mitchell E. asking the question may ensure that it does. those that are explicit.. at 186. etc. rather than confusion. No test subject had difficulty identifying the source of the products. 320 (2000) (because of cognitive processing limitations. see also Pullin. The unexamined life may or may not be worth living.103 When surveys ask about whether and how a “Michelob Oily” ad effects a respondent’s evaluation of Michelob. While prominent disclaimers may work as part of tombstone ads. 307.. “obviously effective disclosures (e. See id.”102 Thus. for example. See. The problems with putting consumers in research settings may explain some of the rise in anthropological marketing research. The Use of Concurrent Disclosures to Correct Invalid Inferences. Dodson et al. 122 J. Raskopf. observation of consumers in the wild. supra note . Another sign that the Morrin & Jacoby study was somewhat unusual comes from the prominent disclaimers used to ensure that they could test dilution.. at 269. 181 (1991)). Once an idea has been brought to a respondent’s attention. 166 (1993)). when subjects in dilution surveys are told they’re doing marketing research – the usual explaination – they are likely not just to behave differently but to think differently. EXPERIMENTAL PSYCHOL. Trademarks are strong enough to constitute product attributes in their own right and to induce respondents’ reactions. 26 J.and emotion-laden appeals to which consumers are generally subjected.101 As a result. id. Thoughts Beyond Words: When Language Overshadows Insight. 25 MEMORY & COGNITION 128 (1997). and they sound good doing it.terms of the question don’t have much meaning for the respondent (as whether consumers “associate” one thing with another probably doesn’t) distorts reasoning. 60 J. id. 103 Morrin & Jacoby. V. at 268. at 155. See Morrin & Jacoby. supra note . TRADEMARK REPORTER 76 (1986). further ensuring that information and not contextual. The Verbal Overshadowing Effect: Why Descriptions Impair Face Recognition. 59 (1986). he often thinks that it is relevant: “[W]hat happens is that we come up with a plausible-sounding reason for why we might like or dislike something and then we adjust our true preference to be in line with that plausible-sounding reason. because words displace visual memory) (citing Chad S. Schooler et al.. 100 GLADWELL. tested students who were taking marketing courses. Gita Venkataramani Johar & Carolyn J. 271. CONSUMER RES. See id. See JUDITH SCHOR. making their answers unreliable gauges for ordinary situations where much processing is consciously inaccessibe) (citing Timothy Wilson & Jonathan Schooler. Disclaimers in Trademark Infringement Litigation: More Trouble Than They Are Worth?. supra note . e. “forcing nonexperts to think deeply about reactions is to render their reactions useless. Disclaimers as a Remedy for Trademark Infringement: Inadequacies and Alternatives. 76 TRADEMARK REP. 102 Id. The very success of the disclaimers indicates an unusual type of processing compared to information processing in more natural market settings. the unexamined brand evaluation is very different from the examined brand evaluation. 101 See id. Radin.) are often ineffective”). The students were told they’d be tested on the information provided in the ads. Thinking Too Much: Introspection Can Reduce the Quality of Preferences and Decisions. 275.g. at 181.”100 People are eager to explain themselves. Jonathan W. BORN TO BUY  (2005). at 119-20 (conscious cognition decreases the accuracy of witness identification. at  (same result with more elaborate dilution tests). other studies show that disclaimers rarely work so well.g. PERSONALITY & SOC. PSYCHOL. Jacob Jacoby & Robert L. at 64-71 (making people explain their choices produces divergence between previously expressed preferences and analyzed preferences). which themselves were not the image. emotional associations would be primary. Normative Implications Suppose that the internal search costs model is completely correct. Simmons. 19 . those that are encoded. but they aren’t very good at identifying their own reactions. cf. at 268-29.
205 (2d Cir. and thus they dilute. McArt. and the defendant’s activities have caused them to think something different.purchases. The things that we can be most confident affect our mental models of brands are noncommercial. whether in mass media or limited circulation. The existence of girls named Tiffany. the dilution law we have now would be incapable of fulfilling the protective function assigned to it. Tiffany is currently a well-recognized name for a girl.104 Even so.” should therefore interfere with immediate recognition of the mark. at 17. Anheuser-Busch (decided as an infringement case..107 104 105 See Swann [Year 2002]. As far as we know. The use of the language of consumer choice is inconsistent with lived experience that our associations can be disrupted without our consent. or the Dallas Cheerleaders in a pornographic film. 106 See Shuy. 604 F. i. but also fragile.” As Laura Heymann puts it. The problem isn’t generally competitors.com/abstract=907713. Balducci v. 107 See Mattel [Kozinski stating. but because meanings have no sovereigns. we can’t go back to our previous. or Old Navy. Once we’ve seen the Mona Lisa with a mustache added. supra note . Cognition and Commerce The internal search costs model cannot explain why dilution should be limited to “commercial uses in commerce. Ltd.”). casual uses: what our friends think of the Gap. but all the other people who have opinions about the product and the trademark. http://ssrn. 1979) (“[I]t is hard to believe that anyone who had seen defendants’ sexually depraved film could ever thereafter dissociate it from plaintiff’s cheerleaders. at 16. Metabranding and Intermediation: A Response to Prof. in other words. 157 (Robert C. Even if McDonald’s can get McSleep Inns enjoined. that “Barbie Girl” dilutes the meaning of Mattel’s Barbie mark]. uniformity. in CENSORSHIP AND SILENCING: PRACTICES OF CULTURAL REGULATION 147. is claiming a right to the exclusive mental association with the brand in the minds of the public.”105 Noncommercial uses create mental associations. Pussycat Cinema. Laura A. Consumers are probably not choosing to take up a message. but properly 20 .2d 200. promiscuously creating associations. not to any deception on the part of the defendant. the brain has no use in commerce requirement or other distinction that would keep references to Tiffanythe-girl from activating thoughts of Tiffany’s-the-jeweler. also dilute. McLawyers.106 Parodic uses. Fleischer (June 2006). and the ability of people to say “I’m going to hang out at Tiffany’s. supra note . McPaper. See Frederick Schauer. as if it were beyond cavil. in any way they could consciously identify. The following sections explore the consequences of the cognitive/internal search costs model for the appropriate shape of dilution law. and other qualities associated with McDonald’s – McJob. “A dilution action essentially argues … ‘We have spent a lot of money and effort on telling consumers what they should think about our brand. or vice versa. pristine images of them. capable of losing that selling power if other people promiscuously attach associations to them. Inc.. Post ed. Heymann argues that marketers can only offer meanings. Dallas Cowboys Cheerleaders.” Id. Consider the multiple uses in news reporting and other noncommercial speech of the suffix “Mc” to indicate convenience. Heymann. the pervasive communicative uses of “Mc” as shorthand for a set of qualities keeps the mark’s meanings from being locked down. or to change their perceptions of a familiar mark. at 623 (strong brands are fragile). that I think dilution protection is paradoxical. and it is up to consumers to agree or disagree: “If another’s use of a mark causes disruption or diminishment in the associations consumers have with that mark.’ … The brand owner. v. The Ontology of Censorship. 1998). cheapness. It is not because I think consumers are sovereigns of meaning. at 4-5 (discussing Quality Inns case). the result is attributable to consumers’ decisions to acknowledge that disruption.
109 First Amendment criticisms of dilution law abound. 44 Liquormart. Post-Experience Effects on Consumer Memory. then dilution law should be especially concerned about negative reviews and comparative advertising. understood as a measure against mental clutter. Even dilution studies dilute. at 17 (discussing ways in which intermediaries such as reporters can distort brand messages). justify distinguishing understood as a tarnishment case. The city’s rationale was that newsracks interfered with the safety and beauty of the public streets.111 In that case. supra note .g. See. Denicola. CONSUMER RES.”) (citation omitted). etc. 108 See GERALD ZALTMAN. Mutual of Omaha. 706-07 (2003). and a disturbing one at that because the court didn’t give weight to free speech interests). REV.108 If that’s so. One way to formulate this criticism is as a First Amendment challenge. indicate that dilution also irrationally targets commercial speech for a harm done by a much larger set of speech acts. and that. L. 40 HOUSTON L. turning positive opinions negative). Freedom of Speech and Intellectual Property: Some Thoughts After Eldred. Not the mental effects. they will insist that their initial opinions were also positive. HOW CUSTOMERS THINK: ESSENTIAL INSIGHTS INTO THE MIND OF THE MARKET 182-83. at 12-13. 19 PSYCHOL. Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols . 25 J. but between 1500 and 2000 newsracks selling conventional newspapers would remain. There were 62 commercial newsracks that the city wished removed. 697. which is less valuable. 166-67.. Kathryn A. not only will their evaluations become more positive. 1982 WIS.Reviews also affect perceptions of quality. Braun et al.. The problem with that argument was that the nature of the speech conveyed by the newsracks. & MARKETING 1 (2002). Discovery Network.110 But the enormous disconnect between the cognitive processing explanations of dilution and the scope of dilution law offers a simple analogy: City of Cincinnati v. 158 (1982). at 1218 n. and Bartnicki. Braun. while it could not ban newsracks containing fully protected speech like that of the New York Times. by identifying harm to consumers. 319 (1999). The similarities between Discovery Network and dilution law.269 (“One benefit of understanding dilution law as we have explained it elsewhere--as directed at reducing consumer search costs--is that our approach may reduce the tension between dilution law and the First Amendment. but the commercial advantage to the junior user. see also id. but not newsracks containing traditional newspapers. Robert C. It is possible to convince people that they liked a product that they specifically said they disliked by showing them positive reviews (or vice versa.109 Stacey Dogan and Mark Lemley suggest that the search costs model of dilution. 111 507 US 410 (1993). 112 Eugene Volokh has drawn on Discovery Network to argue that the FTDA’s exclusion of noncommercial speech is content-based. commercial or not. if they produce positive results. had nothing to do with their effects on safety and aesthetics. it could ban commercial speech. Bradford. See Eugene Volokh. but to my knowledge no one has yet made this direct analogy. supra note . This complete absence of fit between the harm and the targeted speech invalidated the law. Kathryn A.112 The response to a Discovery Network-type First Amendment challenge would plainly be to identify the harm of dilution as that caused by free-riding. cf. bolsters dilution against the numerous First Amendment attacks on to which it has been subjected. the Supreme Court ruled that the city could not target commercial speech by banning newsracks containing commercial handbills. e. REV. 180-81 (describing various successful experiments in manipulating memories about products or services). 21 . 110 See Dogan & Lemley [Publicity]. Make My Memory: How Advertising Can Change Our Memories of the Past.
But the existence of the exception suggests that there’s something very wrong with the attention/association model of dilution. dilution can produce a social benefit. Like the noncommercial use exception.U. 22 . The Perplexing Exception for Comparative Advertising U. such as entering a store. One could even easily interpret the milliseconds of (mis)recognition as initial interest confusion. but that seems quite unlikely. and then tied to the competitor’s ad. trademark owners litigate too many cases. This is a deliberate choice reflected in the FTDA’s explicit exception for comparative advertising. even someone who thinks that there’s no reason to allow free riding on trademarks.commercial diluting uses from noncommercial diluting uses. Even if dilution does harm to individual brands. ii. Moreover. given the other incentives to make one’s mark famous. from the major tests of whether dilution is likely to the exception for comparative advertising. That doctrine originally assumed that consumers took some action as the result of initial interest. a noncompetitor’s free riding doesn’t damage a trademark owner (as opposed to the junior user’s competitors. as opposed to business models. presumably because they realize that they will often prefer comparative advertising themselves. iii. this should constitute a most insidious kind of dilution. like Joe’s Diner forced to compete against the classysounding Tiffany’s Restaurant) unless and until the trademark owner’s customers experience the mental effects discussed above. If the food tastes better at Tiffany’s Restaurant – as the marketing literature indicates it 113 A strong believer in protecting commercial speech under the First Amendment might see this response simply as a restatement of the claim that commercial speech gets less First Amendment solicitude than noncommercial speech. Perhaps dilution protection does increase the incentive to create famous marks compared to a world without dilution protection. mainly because free riding is endemic to a functioning economy. the consumer’s web of associations with the trademark were activated. expired patents. If we take the cognitive processing model of dilution seriously. Moreover. the comparative advertising exception makes it even harder to figure out what the harm of dilution really is. Still. But what is comparative advertising for? It gets a consumer’s attention. because it takes some milliseconds for a consumer to realize that this is a comparative ad. much of current dilution law makes very little sense.113 I don’t find this particularly persuasive. If free riding on a mark is really what we’re targeting. law gives substantially greater protection to comparative advertising than many other countries. resulting in a net loss. but has expanded under the pressure of internet litigation so that even distraction caused by comparative advertising might count as actionable confusion. should consider that the cognition-based harms of dilution are largely inflicted by noncommercial uses. There’s no push among trademark owners to eliminate the comparative advertising exception for dilution. Private Harm versus Social Harm Many have criticized dilution law on the ground that the game isn’t worth the candle. so the harm of free-riding is elusive. and the like. No matter what happens next. necessarily creating an association between the trademark owner and its competitor. particularly in the E.S.
Jacoby . a change in taste is not a decrease in consumer surplus.114 Dilution may represent a change in consumer preferences. at 595 (brands are among a company’s most valuable assets and. or at least invoked by defendants. 19 (distinguishing trademark dilution by accepting. at 1074-75 & n.g. Klerman doesn’t specify whether he thinks the similarities will be perceptual or in some sense “objective. Godiva. retain their value despite huge shifts in the competitive environment). though concluding that it is permitted because Judge Posner consented). Greater attention to psychological research on branding and association will probably only increase courts’ attention to nice questions of “use. But cf. L. Consider. Swann [Year 2002]. id. 117 See Dennis S. The Use in Commerce Requirement The flip side of the pervasiveness of noncommercial dilution is that there is increasing pressure on the use in commerce/trademark use requirement in both dilution and infringement cases.J. for example.115 Especially given the overall marketing thesis that trademark values are composed of intangibles. such as search engine keyword sales. 94 Geo. as Dennis Karjala has written. this is no more true than the idea that decreased present-day demand for horses and buggies. at 1769 (arguing that qualities of close competitors are likely to be highly similar). Though trademark evangelists promise infinitely extended value from a carefully cultivated brand.117 People may or may not be happier with their beverages of choice than they were seventy years ago. at 1767.119 Use of one famous mark in a 114 115 See Klerman. 23 . supra note . See Klerman.. now that most people use mechanized transport. supra note . properly managed. iv. then its relative desuetude would represent a social loss. supra note . But. Influence [penultimate chapter]. 118 Cf. not a social loss. at 603-04 (dilution law won’t create rights in gross because the trademark owner’s own actions can cause the mark to lose value. that dilution causes consumer harm). but allowing trademark owners to control meaning will help consumers). There is a subtle contradiction between the marketing theory that supports dilution law – the idea that brand value inheres not in specific qualities.”118 This is so because it’s possible to create associations that affect the evaluation of a product simply by putting it in proximity with another. represents a social welfare loss. Even if exposure to Dogiva biscuits makes people prefer See’s candy to Godiva. in cases in which the standard multifactor infringement test doesn’t work all that well. Given that perceived quality is what changes with dilution. just as margarine wrapped in foil tastes better – patrons benefit. but the persistent meaning of particular brands isn’t the key to consumer satisfaction. Karjala. at 38-40 (engaging in extended analysis of whether his dedication of a book to Judge Posner constitutes dilution by free riding without considering whether it is a commercial use in commerce. id. when so many other shortcuts are always prepared to provide a full complement of positive feelings. Ovaltine.116 the most perfectly nurtured mark can falter based on broader social shifts.” as we might deem the percentage of cocoa in chocolate to be. the consumer who picks See’s can be just as happy with her favorite choice as she was with her former favorite. e. Congestion Externalities and Extended Copyright Protection. “Use in commerce” as a limit on the application of trademark law is increasingly being employed. 1065. 1071-74 (2006). If the fame and positive associations of this mark had substantial consumer benefits. supra note . 116 See. 119 See Ciardini.might. though somewhat skeptically. but in a mental shorthand that acquires its own apparatus of positive feelings – and the idea that dilution harms consumers. it should be easy for consumers to transfer their good feelings from one brand to another if dilution really occurs.
At the extreme. when PEPSI. for example. I don’t think this dystopian vision is likely to materialize. in part because the case for the cognitive model of trademarks has yet to be made convincingly. To those to whom COKE means cola (and cola means COKE). But that leaves us with a dilution doctrine that is incoherent and largely ineffective in protecting the selling power of a mark. the introduction of PEPSI causes a measure of product category dilution – Coke is no longer the sole cola schema in the consumer’s mind….”) (citation omitted). VI. of course. Conclusion The research discussed in this paper appears to allow us to get inside the mind. brings COKE to mind. such as Adidas for athletic shoes. 24 . id. at 608. 120 See Swann [Year 2002].120 One of the main analogies used in keyword search cases – the common grocery store practice of stocking house brands next to popular national brands – involves a use of the selling power of the national brand. can even activate other famous marks in that category. supra note . from commercial use to protection only for the strongest marks and not the medium-strong. though not a “use” in the current sense trademark law gives to that term. If cognitive science is the answer to the eternal question “what is dilution?” then many aspects of current dilution doctrine will have to be reassessed.category. the vision of “owning the customer” could be used to justify legal control over all uses of a trademark to ensure that only the associations the trademark owner approves of get made. and induces in marketers a fantasy of complete access to consumer perception. at 620 (“A form of dilution does occur. such as Nike. Only association that is substantially brand triggered counts in a dilution calculus ….
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