Visual Metaphor and Trademark Distinctiveness
This Article examines images in the context of trademark law’s inherent distinctiveness doctrine. While trademark law still lacks a coherent, uniform, and predictable framework for deciding the distinctiveness of visual image marks—logos and product packaging—it has long used the “imagination” test to effectively determine a word mark’s distinctiveness. Under this doctrine, immediately protectable word marks must operate in a metaphoric relationship to the words from which they are drawn (i.e., as figures of speech), requiring consumers to use their imagination to reach a conclusion as to the nature of the goods or services offered under the marks (e.g., “Klondike” for ice cream and “Greyhound” for a bus service). This makes sense because the first requirement of a valid trademark is that it be a “symbol”, and, as this Article shows, the basic characteristic of any symbol is its figurative quality. Research in conceptual metaphor theory finds, however, that metaphor is “primarily a matter of thought and action and only derivatively a matter of language.” Indeed, brands rely not just on verbal metaphor, but also on visual metaphor to differentiate themselves from competitors in the marketplace (e.g., McDonald’s “golden arches” and Starbucks’s “siren”). This Article thus claims that visual metaphor provides a figurative, cognition-based vehicle by which to extend trademark law’s imagination test of inherent distinctiveness from words to images. In doing so, it conceives of metaphorical association as a central consideration in analyzing the inherent distinctiveness of both word and image marks.
Dustin Marlan, Visual Metaphor and Trademark Distinctiveness, 93 Wash. L. Rev. 767 (2018).