Trademark and Copyright Disputes

Contrary to popular belief, a ‘linguist’ isn’t necessarily someone who knows a lot of languages, a so-called ‘polyglot’. Instead, linguists are experts in the scientific study of language – its sounds, structures, meanings, uses and impacts. Linguists also study language variation and change, including how grammar, words, and meanings change over time, and how people in different dialect areas and social groups use and interpret language differently.

Because of their unique expertise, linguists make valuable expert witnesses in trademark disputes, including in cases involving similarity of mark and strength of mark.

Similarity of Mark

Among the considerations in assessing similarity vs. difference between two marks are sound, meaning, and appearance. Linguistics encompasses the systematic study of language sounds (phonetics), sound systems (phonology), meanings (semantics), and how context affects meaning (pragmatics, sociolinguistics), so language scientists are well equipped to point out linguistic details that make two marks confusingly similar to one another, or comfortably different, including nuances that may have unconscious impacts on consumers. Linguists can also give expert opinions on appearance, given their knowledge of orthography (spellings), graphemics (writing systems), and semiotics – how people interpret signs and symbols.

Linguists carefully separate out pronunciations from spellings, an important consideration in English, where there are often mismatches between the two.

In the 1980s, Toyota became embroiled in a lawsuit over the name of their new luxury auto, LEXUS, brought by Mead Data Central, Inc., owners of the LEXIS-NEXIS information company. Just how similar are LEXIS and LEXUS? It’s complicated, and just because two words are spelled differently doesn’t mean they have different pronunciations! Linguists can help sort out (sometimes hidden) complexities in the relationship between spelling and pronunciation – appearance and sound.

Linguists also go beyond dictionary definitions to in assessing what words and phrases mean. They examine how terms are used in various contexts, by which groups of people, to consider not only literal meanings, or denotations, but also meaning associations – connotations that can have important implications for whether two similar yet slightly different words – or the same word applied to different products – have similar or different meanings for relevant consumer groups.

What does LEXIS mean? While technically it’s a regular word in English, it’s not very common, and only a handful of people (mostly linguists!) recognize it as an alternate way of referring to ‘lexicon’, the word-stock of a language. A survey conducted in the course of the lawsuit over LEXUS also found little recognition among the general public of LEXIS as the name of the database corporation. However, because LexisNexis is frequently used in legal research, recognition levels among attorneys was much higher. This presented a problem for LEXUS, since attorneys were among the affluent people the car was marketed toward. It could therefore be argued that, in context, the potential for confusion between LEXIS and LEXUS was high. (This argument didn’t end up winning!)

Strength of Mark

In trademark law, strength of mark is assessed along a scale ranging from generic to descriptive to suggestive to arbitrary or fanciful. The scale is congruent with linguistic principles of semantics and pragmatics. In general, the less direct the meaning connection between a mark and the product it’s applied to, the stronger the mark.

Fanciful marks are strongest because they are completely made-up words with no inherent meaning beyond the product they’re applied to, like Kodak or Xerox. Arbitrary marks also have no bearing on the products they refer to, though they might have meaning in other contexts, for example Apple computers vs. ‘apple pie’.

Determining whether marks are suggestive or descriptive is trickier, since in each case there’s a meaning relation between the mark and the product. With suggestive marks, the meaning relation is indirect, requiring a ‘leap of the imagination’ to make a connection, while descriptive marks more straightforwardly describe the designated goods or services. ‘Fast Cars’ and ‘Speedy Delivery’ can’t be trademarked, since the adjectives simply describe the product or service in each case. ‘Mustang’ automobile is suggestive, since it connotes rather than describes a fast, powerful car, and you have to use your imagination to make a connection between horses and automobiles.

Finally, at the lowest end of the scale are generics, words that describe an entire class of goods or services rather than those coming from a particular manufacturer or provider. Suggestive marks can be trademarked; descriptive and generic marks are typically fatally weak, though weak marks that take on so-called secondary meaning through long association with a particular company can succeed – think International Business Machines (IBM) and even the very general-sounding General Motors.

As with similarity of mark, context plays an important role in assessing strength: The word ‘copper’ in the phrase ‘copper mining’ is generic, but it’s descriptive in ‘copper cookware’ and suggestive in ‘Copper Suntan’.

Is Booking.com generic or trademarkable? The US Patent and Trademark Office tried to maintain that it’s generic, based on its linguistic structure, consisting of two generics – ‘booking’ + ‘.com’. However, the US Supreme Court ruled otherwise, noting that generic-ness is not just a matter of literal meaning but also consumer interpretation – a clear example of how important it is to consider not just literal meaning but also meaning in context in assessing strength of mark.

Because linguists are experts in how words and phrases take on meanings (semantics), including in context (pragmatics, sociolinguistics), they can provide incisive input into cases involving strength of mark – that is, the strength of the meaning association between a name and the product or service it’s intended to denote.

Trademark Dilution and Genericization

Linguists can also assess meaning change in cases of possible trademark dilution and genericization, or genericide. Essentially, genericide is a type of semantic broadening, a process whereby words take on wider meanings over time. Broadening is common in language and in English has affected not only brand names but also regular, everyday words like ‘dog’, which used to refer only to one type of dog, and ‘holiday’, which used to refer to days of religious celebration but is now broadly applied to time off from work. Words can also undergo semantic narrowing; this applies in cases like General Motors, which seems to refer generally to motors, or their manufacturers, but actually refers narrowly to one company.

Semantic broadening has affected a number of trademarks over the decades. ‘Aspirin’, ‘air fryer’, ‘teleprompter’, and ‘trampoline’ all used to be brand names but eventually underwent genericide, as their meanings were broadened to encompass similar products made by other manufacturers. Semantic narrowing has had a positive impact on companies like IBM, General Motors, American Airlines and Holiday Inn, who can use their descriptive/generic marks as trademarks since the names have taken on narrow associations with these particular companies.

Other Matters of Meaning

Linguists can also help in other cases where the meanings, of words, phrases, sentences, and beyond are in dispute, for example in contract interpretation and defamation cases. Dr. Natalie Schilling regularly provides expert linguistic analyses, reports, and testimony in cases involving similarity of mark, strength of mark, and other issues of language meaning. Contact her today to learn more!