Authors: Irene Calboli (Singapore Management University/Texas A&M University School of Law) and Dan Hunter (Swinburne University of Technology Law School)
Trademarks have grown like kudzu. There is, however, no comprehensive literature on the worrisome trend of what we call “trademark proliferation.” This article seeks to address that gap.
First, this article shows why trademark proliferation is a problem. Proliferation means that there are many marks in the commercial sphere, which are not needed for the purpose of identifying the source of the good and or the service to which these marks attach as these goods or service are already identified by a other marks. At the same time, the strength of the rights granted to these marks has dramatically increased, as a result of the general expansion of trademark rights.
Second, the article examines the important reason why scholars have not taken a strong stand against trademark proliferation. There seems to be an assumption that these marks satisfy the foundational distinctiveness requirement. Yet, the problem is that distinctiveness has come to mean little more than “recognizable” by the human senses. This is not at all what we should mean by “distinctive”—and likely not what was meant by the courts when they interpreted the concept of distinctiveness as one of the pillars of trademark protection.
In the final section of the article we discuss how we can limit this proliferation. First, we rescue distinctiveness from its current formulation, and give it the conceptual teeth it needs to operate as a limit for trademark protection. Then we examine aesthetic functionality and argue for a better theory of aesthetic functionality as a needed limitation against trademark proliferation.