Linguistic Battles in Trademark Disputes

Linguistic Battles in Trademark Disputes

By the same author BUREAUCRATIC LANGUAGE IN GOVERNMENT AND BUSINESS THE LANGUAGE OF CONFESSION, INTERROGATION, AND DECEPTION LANGUAGE CRIMES

Linguistic Battles in Trademark Disputes Roger Shuy Distinguished Research Professor of Linguistics, Emeritus Georgetown University

Roger Shuy 2002 Softcover reprint of the hardcover 1st edition 2002 978-0-333-99758-1 All rights reserved. No reproduction, copy or transmission of this publication may be made without written permission. No paragraph of this publication may be reproduced, copied or transmitted save with written permission or in accordance with the provisions of the Copyright, Designs and Patents Act 1988, or under the terms of any licence permitting limited copying issued by the Copyright Licensing Agency, 90 Tottenham Court Road, London W1T 4LP. Any person who does any unauthorised act in relation to this publication may be liable to criminal prosecution and civil claims for damages. The author has asserted his right to be identified as the author of this work in accordance with the Copyright, Designs and Patents Act 1988. First published 2002 by PALGRAVE MACMILLAN Houndmills, Basingstoke, Hampshire RG21 6XS and 175 Fifth Avenue, New York, N.Y. 10010 Companies and representatives throughout the world PALGRAVE MACMILLAN is the global academic imprint of the Palgrave Macmillan division of St. Martin s Press, LLC and of Palgrave Macmillan Ltd. Macmillan is a registered trademark in the United States, United Kingdom and other countries. Palgrave is a registered trademark in the European Union and other countries. ISBN 978-1-349-43283-7 ISBN 978-0-230-55475-7 (ebook) DOI 10.1057/9780230554757 This book is printed on paper suitable for recycling and made from fully managed and sustained forest sources. A catalogue record for this book is available from the British Library. Library of Congress Cataloging-in-Publication Data Shuy, Roger W. Linguistic battles in trademark disputes/roger W. Shuy. p. cm. Includes bibliographical references and index. ISBN 978-0-333-99758-1 (cloth) 1 Trademarks Law and legislation United States. 2. Secondary meaning (Trademark law) United States. 3. Forensic linguistics United States. I. Title. KF3193.S55 2002 346.7304 88 dc21 2002072635 10 9 8 7 6 5 4 3 2 1 11 10 09 08 07 06 05 04 03 02

Dedicated to my parents Reo W. Shuy (1904 1978) and Gladys Day Shuy (1906 1979)

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Contents Acknowledgements Preface ix x 1 The Battles over Linguistics and Law 1 2 A Very Brief Introduction to Linguistics for Lawyers 17 3 A Very Brief Introduction to Trademarks for Linguists 28 4 Generic vs. Secondary Meaning: 46 Registry Hotel v. Hospitality Management 5 Teaching a Jury about Meaning: 56 Warren v. Prestone 6 Sounding Alike and Meaning Alike: 69 ConAgra v. Hormell 7 Descriptiveness: Nouns and Modifiers: 81 Woodroast Systems v. Restaurants Unlimited 8 The Meaning of a Patronymic Prefix: 95 McDonald s v. Quality Inns 9 Sounding, Looking, and Meaning Different: 110 AMR Pharm v. American Home Products 10 Differences in the Ingredients, Qualities, and Characteristics of the Products: 116 Pyewacket v. Mattel 11 Going beyond Competing Company and Product Names: 125 AutoNation v. CarMax 12 Using Foreign Language Words in Trademarks: 144 Alixandre Furs v. Alexandros Furs 13 Disclaiming Dealership Authorization: 150 Matrix Essentials v. F & M Distributors 14 Using Linguistic Tools and Thinking in Trademark Disputes 159 vii

viii Contents 15 Some Suggestions for Linguists 171 16 Some Suggestions for Attorneys 182 17 Power, Control, and the Ownership of Language 190 References 201 Cases Discussed 204 Index 205

Acknowledgements The rapidly emerging intersection of linguistics and legal issues has many important leaders, all of whom have affected my thinking in many ways. In the US I am particularly indebted to my good friends and colleagues, especially Larry Solan, Ron Butters, Peter Tiersma, Bethany Dumas, and Bruce Fraser with whom I have had the great privilege to exchange ideas and from whom I have learned much. I am particularly indebted to Larry Solan for his helpful comments on an early draft of this book, and to Ron Butters for his suggestions on the chapter that describes a case in which we were expert witnesses on opposite sides. I have also learned much from my colleages in other countries, including especially Malcolm Coulthard and Janet Cotterill in the UK, Hannes Kniffka in Germany, and Weiping Wu in Hong Kong. The attorneys who invited me to help them on the cases described in this book also receive my deepest appreciation: Larry Hefter, Bart McLeay, Bruce Little, Lou Colombo, John Alex, Gilbert Schill, and Richard Knoth all believed in the value of linguistic analysis. ix

Preface This book has three intended audiences: attorneys who may not be familiar with the usefulness of linguistics in trademark cases, social scientists who may have concerns about how the legal community enforces its own language policy and planning, and linguists who may not be familiar with the way trademark law works and how their specialization can be used in such cases. It does not claim to provide everything that there is to know about trademark law or linguistics, however. Linguists who are asked to work on trademark cases would do well to give consideration to the book cited most in judicial decisions in such matters: J. McCarthy s Trademarks and Unfair Competition. Attorneys wanting to learn more about the potential usefulness of linguistics in their cases have not had available an equivalent source of information or set of examples about how linguistics can be used in trademark cases. This book attempts to reveal at least some of that potential usefulness to them. Social scientists interested in institutional authority, power, and control of language may find the discussion of how these factors contrast of some interest. It should be admitted that there is no completely satisfactory way to address three different audiences at the same time. One would obviously write differently when the separate readers are linguists, attorneys, or social scientists concerned with the language planning and power of law. Any linguist who tries to show attorneys how linguistics is, or can be, helpful to them cannot, and need not, say everything there is to say about linguistics. Likewise, there is no good way to explain all the intricacies of trademark law in a book intended for an audience of linguists. Some of the issues that the individual fields may find important are likely to be overlooked, oversimplified, or glossed over too quickly, and this book allows for such possibilities from the start. But it was felt that some kind of first crossover step should be made, one that gives some basics to these fields at the same time. For this reason considerable tolerance on the part of all readers is humbly requested. This work grows out of my own experiences in trademark cases over the past two decades. Other linguists and attorneys may have had similar or different experiences, of course, and it is hoped that by making my own work available, others may find it useful and build upon it. x