Does a Trade Mark Have To Be Factually Truthful?

Several of my fellow Kats managed to do a better job than I in juggling the recent INTA meeting in San Francisco with other tasks, as evidenced by my recent silence. Just for the record though--I did set a new speed record for the fastest dash by a post 60-year old as he literally ran from Gate L1 to Gate 17K at O'Hare airport in Chicago to catch a trans-Atlantic flight. With those heroics now behind me, it is time to get back to IPKat and the the task at hand.

In keeping with INTA and its focus on trade marks, permit me to pose the following question: Does a trade mark have to be truthful? In one sense, the answer is most certainly "yes". The source theory of trade marks is predicated on the notion that no one is permitted to use your mark if such usage might deceive the public with respect to the source of the goods or services. In this case, therefore, a trade mark has to be truthful with respect to source.

But what about a mark that lies somewhere in that murky area between being descriptive and suggestive? Here we can find ourself in a situation in which the mark, even if registered, still has an element of descriptiveness with respect to the goods or services which it identifies. What happens, as a matter of trade mark law, if that descriptive element is factually inaccurate with respect to the underlying goods or services? In particular, can the mark, being descriptively innacurate, prevent a third party from using the same term in an accurate manner in connection with the same goods or services?

I thought of this question in connection with that most curious American phenomenon, the big business of intercollegiate sports. Alongside the educational function, most American colleges and universities maintain large athletic programmes, most notably in (American-style) football and basketball (think "March Madness") that pay seven-figure salaries for the head coach and fill stadia of 100,000 or more seats. For efficiency purposes, most colleges and universities belong to one of a number of sports conferences. The members of each such conference are usually in geographic proximity with each other, which cuts down on travel and fosters natural rivalries between the flagship universities of contiguous states (think Ohio State and University of Michigan).

Not surprisingly, each conference has a name -- and in this lies the potential for factual inaccuracy. Two of the most well-known conferences are the Big Ten Conference and the the Big 12 Conference. The problem is that the Big 10 Conference now contains 12 memembers (with the recent addition of the University of Nebraska) and the Big 12 Conference now contains only 10 members (with the departure of the University of Colorado and the University of Nebraska). Both of these conference names are registered as trade marks in one form or another.

And so--the question. Should both the Big Ten and the Big 12 be allowed to maintain their respective trade mark registrations in light of the fact that the reference to the respective number of conference members is in each case inaccurate? On the one hand, since there is no likelihood of confusion with respect to the ultimate organizational source of each of these sports conferences, it is possible to argue that the numerical inaccuracy is irrelevant as a matter of trade mark law. Indeed, if the respective names would simply be a matter of indicating how many members belong to each of these althetic conferences, it is arguable that neither should enjoy trade mark protection. The fact that each of these names is registered as a trade mark indicates that each of these names has achieved goodwill as an indicator of source.

On the other hand, consider a college athletic conference that has either ten or 12 members. Should such a conference be prevented from calling itself the "Big Ten" or the "Big 12", if such a designation is factually accurate, simply because in so doing, it would be liable for infringement? Stated otherwise, in a potential conflict between source identification and factual accuracy, isn't there something wrong in favouring the former over the latter?

For the record, I am a die-hard Ohio State supporter.  Ohio State is a member of the Big Ten Conference, which has 12 members, not ten members. I am not confused about the fact that the name Big Ten identifies a specific athletic conference that once had ten members, but now has 12 members (and may in the future have even more). As a trade mark practitioner, however, I wonder: should the Big Ten Conference (or Big 12 Conference) be forced to change its name?

More on the names of intercollegiate athletic conferences here.

Christian Louboutin: a (red) sole proprietor speaks

Prompted by the AmeriKat's first post yesterday, which reviewed the Red Soles spat between Christian Louboutin and the Gucci Group's Yves St Laurent, the IPKat's friend Mary-Ellen Field (Brand Finance) was inspired to write the following opinion piece which the Kat -- every wary of expensive footwear for the very good reason that he is a quadruped -- is pleased to share with his readers.  It runs like this:

"As the owner of several pairs of much loved and dare I say much admired Christian Louboutin's (I don't expect male readers will understand any of this) I can only think that the Gucci Group must be really desperate to paint their YSL soles red. It seems an incredibly silly thing to do.

Do they really think that women who are prepared to spend over £400 pounds for a pair of CLs will actually change their minds and buy a pair of YSL's because they have red soles? Just because we are prepared to spend a lot of money on shoes does not mean we are stupid (Please try to control yourselves, all you tomcats reading this.  Expensive shoes -- like hair colour and other unmentionables -- are no indication of intelligence or the lack of it)

Listen up YSL, we women buyers of luxury shoes make our choices of the shoes we buy based purely on love: if we love them we buy them. This is very annoying to accountants, lawyers and bankers because love is not measurable. CL is the ultimate status shoe at the moment (in my humble opinion and I could send you a photo of my shoe closet if required to prove this). Wearing our red soled CL works of arts makes us part of a special club, just like owning an Apple product or a Ferrari.

I also quite often love YSL shoes enough to buy them too -- but if you feel the need to try to trick me by adding red soles I won't love you any more. You don't need to pass yourself off as CL, you are beautiful in your own right.

It always amazes me, when I go to so called "luxury events, conferences" etc, that hardly any of the attendees are attired in or carry any luxury products at all. Perhaps the luxury industry pays so badly that they can't afford to buy the products they flog. It is always so disappointing".

This member of the Kat team knows little of female shoe fashion but feels he has a slightly proprietary interest in anything to do with red footwear, since the Red Shoes -- the movie classic of that name -- was co-produced and co-directed by Emeric Pressburger, who had the good fortune to the cousin of this Kat's mother-in-law. Never mind that, Merpel says, what's important here is to find out what other readers think about what, at the very least, seems to have been a curiously risky decision on the part of YSL.