The Feminine Mystique of the Brand in Trademark Law Today
Just as we have been witness to a steady expansion of trademark protection, we have also been witness to the gendering of the object of that protection. Today the brand is feminine in trademark law and that gendering is instrumental to our desire to increase protection for trademarks. This gendering of the brand tracks recent changes in trademark law and this is no coincidence. The expansion of trademark protection spans a range of doctrines , but perhaps the most dramatic expansion of trademark rights has been the creation of an antidilution right. The trademark bar claimed that without this right, their valuable brands were vulnerable. They asserted that these valuable brands attract the attentions of bad actors. Their brands become prey to their advances. And when these bad actors have used their brands, they are left damaged. Given this danger, it was argued that the law should run to their aid. Promotion of this moral imperative to increase protection is important because why else would we.
Dilution law radically shifts the balance in trademark law. For more than a hundred years, federal trademark law rights hinged on proof of consumer confusion. The confusion of consumers in the marketplace is a harm we can understand and are motivated to protect against. And what is the harm of dilution? According to the theory, dilution weakens the mark, which may diminish its value. How do we prove or measure impairment? We can't. Instead, trademark owners would like us to take it on faith that this harm will occur when someone else uses a famous mark. The interest being protected in trademark law has also shifted. Whereas the law's concern had been for the consumer, it is now for the brand. And the particular interest the law seeks to protect appears to be a reputational interest. Thus, the new dilution right more resembles defamation law than trademark law. But at least in defamation law, plaintiffs are required to prove an injury. Generally, under defamation law in order for the publication of a slander to be actionable some special damage must be proved to flow from it.
The presumption of injury to reputation in today's trademark dilution law recalls the 19th century tort of defamation of a woman's reputation. Under this exception to the general rules of defamation, impugning the chastity of a woman was slander per se, with no need to show damage. The arguments in favor of dilution protection for brands tracks Victorian attitudes towards women. Like trademarks today, women were thought of as property whose value was dependent on their purity. Negative associations and innuendo could alter that value. We can think of trademark distinctiveness-the quality that lends marks their special protections-as analogous to a woman's pedestaled status. Distinctive marks are set apart from others. Marketers admire their aesthetic appeal and play on their accessibility/inaccessability.
Like the Victorian woman whose injury must be presumed because she cannot prove a loss in economic status, so is the brand today. V Secret could not prove a loss of sales, licensing fees or diminution in valuation even after Victor Mosely used a similar mark on a shop that sold sex toys. Like the Victorian woman, the harm can not be proven because the harm is not a market harm.
Farley, Christine Haight, The Feminine Mystique of the Brand in Trademark Law Today (August 11, 2008). Available at SSRN: http://ssrn.com/abstract=1217875.