The mark is the beast

Oh, Yum(TM) -- for trademarkers, the Big Dig® sundae is just a snack. The main course is our common culture.

by Tom Scocca

Who owns Polo? As of this month, the ancient and genteel sport is in joint custody, thanks to a lawsuit the Polo Ralph Lauren company filed this spring against the US Polo Association. Lauren's company claims that the Polo Association's 23-year-old official magazine, Polo, infringes on its trademark, because the magazine decided last year to expand from covering a rich person's sport to include rich people's fashion and lifestyles as well.

On July 6, federal magistrate Mary Milloy ruled that while the suit goes forward, Polo can keep publishing -- but it's required to run messages on the cover, the masthead, and the contents page, warning readers it is not affiliated with Polo the fashion company.

Even to lawyers, the suit seems a bit ridiculous. "I don't think Lauren's case is a good one," says Los Angeles attorney Peter Eichler, who defends Technicolor and a host of other entertainment and business trademarks from infringement. "I think it was a stupid action on their part."

But under trademark law, Lauren clearly has a case. Not because he created the sport of polo, nor even because he invented polo's association with upper-class life, which predates Lauren by centuries (by some accounts, going back to the Persian royal court in A.D. 600). What he has done is spend years marketing "Polo" brand accessories to upscale (or would-be upscale) consumers -- and that could well be enough to convince a court that "polo" isn't a word, it's a business asset.

If that happens, polo will join the ever-lengthening list of common words and ideas that have been appropriated as private property. A Boston Ballet program informs us that we're not watching a Balanchine work, but a Balanchine® one, danced in the Balanchine Style®; the Postal Service announces it's releasing a stamp to honor Jack Dempsey(TM). A new mall in Wrentham touts its Premium Outlet Shopping®. And Bailey's Irish Cream presents an ad campaign built around a simple, catchy slogan: Yum(TM).

Common sense might say that many of these claims are unreasonable. But legally speaking, every one of them is valid. Not one of the claimants, no matter how greedy or brazen, is misapplying the principle of trademark. If their claims seem outrageous, it's because trademark itself has become an outrage.

"Trademark is expanding wildly, if not out of control," says University of California law professor Stephen Barnett. Since the 1946 passage of the Lanham Act, which established our current trademark-law system, trademark has quietly grown into a pervasive and invasive commercial force. Recent changes in law and doctrine have expanded its reach and made marks easier to get and to use.

What began as a way for a company to protect its own name and reputation has turned into a sort of Oklahoma land rush by would-be trademarkers -- only the frontier they're seizing and fencing off is not the prairie, but our language and our culture.

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One day this month, thanks to the shrewdness of the Brigham's ice-cream company, the Big Dig will become the Big Dig®. For a $245 payment to the US Patent and Trademark Office, Brigham's has staked out the rights to the name of the $11 billion public-works project.

Technically, Brigham's won't be able to stop anyone from saying "Big Dig" -- the registration is merely for a Big Dig sundae. But simply by claiming the name, they've changed the Central Artery/Tunnel Project from everyone's civic pain in the ass into an advertisement for one particular company's dessert.

And the Big Dig sundae is only the latest example of people's attempts to make money off things we think of as common cultural property -- or at any rate, things that hardly seem like commercial property.

In 1992, UMass basketball coach John Calipari registered the team slogan, "Refuse to Lose," which he'd picked up from the school's football team. By the time he left UMass for the New Jersey Nets in 1996, he'd used the slogan to amass a fair-sized fortune -- and drive at least one sportswear company, R2L, Inc., out of business.

The otherwise leftish Village Voice defends itself zealously against alternative newspapers trying to use the name "Voice." Of three other Voices in the country, the Bloomington Voice (Indiana) has been sued, the Dayton Voice has been asked to desist, and the Tacoma Voice has changed its name, without litigation, to the Tacoma Reporter.

The Boston-based organization First Night International collects an initiation fee from any other city looking to use the words "First Night" for a New Year's Eve celebration.

This April, the planting of a million trees in storm-damaged Los Angeles was scuttled amid a suit and countersuit over the National Arbor Day Foundation's claim to the words "Arbor Day."

Miami Dolphins second-string running back Karim Abdul-Jabbar announced that he would play as simply "Abdul," to settle a claim from his more famous fellow Muslim, NBA Hall of Famer Kareem Abdul-Jabbar.

Though the Kareem-Karim tiff may have been a little silly, given the relative accomplishments of the two players, at least Kareem was defending his own name. But it's less obvious why anyone would have a right to "Arbor Day" -- and even less so why anyone could claim "yum." All three claims, though, are based on the same notion: they proclaimed ownership first. As official as that (TM) symbol looks after "yum," it doesn't require any permission to use -- like an explorer's flag planted in new soil, it's a unilateral claim to a piece of property.

The official symbol, which Brigham's is getting, is the ®, which means a mark is registered with the federal government and is entitled to broader protection. A (TM) is, in essence, like an aspiring ®. Nobody keeps track of how many (TM)s there are, but in fiscal year 1997, the US Patent and Trademark office issued 112,509 new ®s -- more than twice as many as it issued 10 years ago. Some are made-up brands, but many are everyday English words, set aside as someone's official property.

Have a Coke® brand soft drink and a smile -- and watch your mouth Even as the likes of Ralph Lauren are using trademark law to slice existing words out of the language, there are other trademark holders trying to keep words from entering the language in the first place. One of the side effects of brand marketing is that companies don't want to be too successful at getting their names into the public consciousness -- because if famous marks become generic terms in the eyes of the law, they can lose their protected status, like onetime brands Escalator and Heroin. A whole subset of marketing is now dedicated to telling people not to use brand names -- or at least not to use brand names in unapproved ways. There are also lawyers who do the same thing. On April 17, for one example, the Phoenix received a letter from the Los Angeles firm of Troop Mesinger Stueber & Pasich, complaining about a writer's use of the phrase Technicolor dreams in a music review. "It should not be necessary to remind you that TECHNICOLOR is not to be used as a descriptive adjective and/or as a synonym for `multicolor' and the like," wrote attorney Peter Eichler (whom we subsequently interviewed for the main story). Such lawyering is meant mainly to prove that the trademark holder is taking steps to protect the property, and to produce a paper trail showing that people who have used a mark in a potentially generic sense have been informed that such a use is incorrect. In the case of "technicolor," thanks to Eichler's efforts all but one of the half-dozen various Webster's dictionaries have stopped defining the word to mean "multicolor." He's not the only crusader out there. Hard on the heels of the Technicolor® folks come the defenders of Popsicle®, Day-Glo®, and Laundromat®. The International Trademark Association offers journalists a high-handed and implausible set of rules for using trademarked terms, including not just such chestnuts as "you cannot say `XEROX the report,' " but also the news that it's wrong to call a pair of Reeboks "Reeboks" -- proper usage demands "REEBOK athletic shoes." The logic behind the rules is that if the usage is kept narrow, brand names won't risk going the way of cellophane, corn flakes, and the refrigerator. What nobody mentions is that the marks that become generic usually are those of the most successful and ubiquitous products, so that the loss of the trademark hardly spells doom for its owner. DuPont and Bayer, after all, certainly managed to get by after losing the naming rights to "nylon" and "aspirin."

This is not what trademark law was designed to do. Trademark law was originally set up -- in theory, at least -- for the protection of consumers. Trademarks allowed buyers to tell products apart, and manufacturers applied for trademarks to distinguish their products and protect their reputations.

Today, as any student of intellectual property can tell you, that premise is a lie. What was a perfectly reasonable way of safeguarding 19th-century shoppers from buying weevilly flour has changed in its very nature, in part because the business world itself has changed. Brand names are now worth more to companies than material assets are. So a mark no longer simply protects the valuable identity of a product -- the mark itself has developed into an object of value. A company could lose all its factories at once in a natural disaster, says Kris Larsen, managing director of the Chicago office of the international brand-consulting firm Interbrand, but "if you still have your brands, you can start up the very next day."

Because brands have such value on their own, a whole new kind of commerce has grown up around them: licensing, in which trademark holders share their marks with others in exchange for royalties. Under this system, the idea that a trademark tells consumers the origin of a product has been stretched to the point of meaninglessness. A Harvard seal on a sweatshirt, for instance, doesn't mean that Alan Dershowitz made the shirt; it means that the university has lent its marketable emblem to a sportswear company for a share of the sales.

"Licensing has grown enormously in a very short period of time," says Eichner, who points out that even a current giant like Disney didn't have licensed merchandise when he started in licensing law in 1963. "In '77," he says, "Star Wars opened the gates." And while some of us were playing with toy Landspeeders, unaware that we were participating in a revolution, other businesses were pursuing the same sort of cultural market penetration as the movies, pushing corporate images instead of products. Some of the world's most famous companies are now built around emblems. Nike's empire, for instance, isn't based on owning sports-gear factories, but on advertising and licensing the swoosh logo that makes the sports gear valuable. "Nike is not a tennis-shoe brand anymore," Larsen says. "Nike is a lifestyle."

By the same token, the fight over Polo magazine isn't about whether or not magazine sales are somehow crimping clothing sales, but about who controls the image of moneyed leisure that surrounds the sport of polo. It's that drive to establish a general brand identity, Eichler says, that makes a company defending its trademark try "to extend its powers beyond what would be reasonable."

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Business has long understood the stand-alone value of trademarks and has lobbied to amend the Lanham Act accordingly. But consumer advocates have never mobilized in response. So laws have indeed changed to reflect the new reality -- but only to make it easier for companies to claim and to license trademarks.

This is where the land rush comes in. Until 10 years ago, one of the essential requirements for registration was that a company had to be using the trademark beforehand. Someone sold potato chips under a certain name for a while -- possibly with a (TM) to show they were serious -- then got an affidavit saying they had done so and presented it to the Patent and Trademark Office. Companies wanting to launch a new brand would take shortcuts, often basing their affidavits on a few token product shipments.

In 1988 the Lanham Act was amended to make the process even easier: a company can now grab a mark preemptively if it intends to use it, a procedural change that officially puts the symbol above the substance. When Procter and Gamble planned to sell fake fat to potato-chip manufacturers, the company was able to register the Olean name even before the first chip was fried.

The fact that a word or symbol may already be in public use doesn't seem to matter. Ralph Lauren may be having trouble controlling the word polo, because there's another wealthy organization, with its own interests, to fight off his claim. But in many cases, there's no such organized defense. Brigham's didn't have to prove that it had a more pressing claim to the Big Dig name than Massachusetts taxpayers did, nor did John Calipari need to prove that he'd coined the phrase he was marketing. Americans are disinclined to accept the blunt Marxist slogan that property is theft, even if we witness the robbery as it happens.

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Once it's been defined as property, our national inclination is to respect its boundaries. The respect you get, though, depends on how much financial clout you can back your claim with. Famously, in 1987, a Maryland restaurant owner named Resurreccion "Sony" Florendo agreed, under threat of a $2 million lawsuit from the Sony Corporation, to stop using her lifelong nickname as the name of her small chain of Filipino eateries. "Sony is my name. It is my personal identity," she told the Washington Post at the time. "I am intimidated by a giant corporation with resources that I can't even think of."

If the situation were to arise today, that corporation would have even more resources. Had Sony Florendo dug in and fought for the right to use her own name in 1987, she might have won in the end. Under federal law at the time, the Sony Corporation would have been required to prove there was a likely chance that customers would actually have believed that Florendo's food was being sold by the electronics giant. But in 1996, President Clinton signed the Federal Trademark Dilution Act, changing the standard and putting another weapon in the hands of whoever plants their flag first. Now, if a trademark is "famous," the holder can sue even if nobody would be confused. Plaintiffs can simply argue that the other use "tarnishes," or even "blurs," the existing mark.

In the first year this act was in effect, Bloomberg Business News reported, it was used by Dunkin' Donuts to stop a Massachusetts T-shirt company from selling shirts that said FUNKIN' GONUTS, by Budweiser to eliminate "Buttwiser" tees, and by American Express to keep a condom from being marketed with the slogan "Never leave home without it," even though AmEx's slogan uses the word "don't." (It did not, however, enable Hormel Foods to get rid of the Muppet character Spa'am.)

If companies have that much control over their brand names, how can the words FUNKIN' GONUTS even appear on this page? News reporting and commentary, under the law, are protected from trademark-dilution suits, a limit based on the notion that trademark law applies only to commercial activity. But the line between commercial and noncommercial activity is itself ill defined; it depends on the judicial conceit that there's a qualitative difference between selling words in newspapers and selling words on T-shirts.

And trademark holders, as a class, are inclined to see any use of their mark as a competing commercial activity. In 1996, the Rock and Roll Hall of Fame in Cleveland sued a photographer selling posters showing the museum building against a sunset, with the caption "Rock N' Roll Hall of Fame." Though the picture was taken from public land, the organization won an injunction and seized the posters, on the grounds that the photos infringed on its official merchandising.

Ultimately, the photographer won on appeal (a federal court ruled that the building was a "public landmark"), but the nut of the Hall of Fame's complaint was a serious issue: on some level, the whole existence of the museum is a commercial activity. The museum seeks to be its own advertisement, to make people think of the Rock and Roll Hall of Fame's identity as a thing they can buy a share of, via licensed merchandise. The Rock and Roll Hall of Fame may sound like a building, and may look like a building against the Cleveland sky, but legally, it wants to be considered a brand.

What goes for buildings goes for singers, too. In a major 1992 case, the New Kids on the Block sued USA Today and the tabloid the Star to keep the publications from using the members' names and images to promote 900-number phone-in popularity polls. The Ninth US Circuit Court ruled against the New Kids, but not without conceding that they had a point. "The record in this case indicates there are more than 500 products or services bearing the New Kids trademark," judge Alex Kozinski noted in the decision.

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The New Kids may have overreached, but at least they had done the work to build up their brand identity. They (or impresario Maurice Starr) were responsible -- through whatever blend of talent, charm, and marketing you care to credit -- for convincing the teenaged sector of the American public that the words "New Kids on the Block" were a valuable commercial property.

It's different when something like "Refuse to Lose" or "yum" gets trademarked. Bailey's didn't spend any effort to create the value of "yum"; "yum" is simply part of our culture, something people have said to each other millions of times, without prompting. By trademarking it, Bailey's is hoping to use the force of all those spontaneous "yums" -- whether uttered over a rib eye steak, a lollipop, or a back rub -- to promote a particular cream liqueur. When Brigham's turns the Big Dig into a sundae, it's piggybacking on the fame that the real Big Dig already has built up. In effect, it's turning the biggest highway-building project in the nation, with all its accompanying radio traffic reports and newspaper headlines, into a marketing campaign. We won't have to write "the Big Dig®" when we're covering the next round of cost overruns, but every time we mention the project by name it's another sprinkle of PR on the sundae.

Eventually, as the world gets wallpapered with (TM)s and ®s, certain words and ideas could be lost altogether. We talk about the rise of "sport-utility vehicles" because the word "jeep," coined by World War II troops, has been locked away by the Chrysler corporation -- which now claims that the origins of the Jeep® brand are unknown. In Europe, use of the smiley-face symbol is controlled by a Frenchman named Franklin Loufrani, who registered it as a trademark there (though Harvey Ball of Worcester, who holds no trademark, maintains that he's the one who created it).

Trademark extends far beyond words or logos -- registered marks include colors (the pink of Owens-Corning insulation), sounds (the three-tone chime used by NBC), and shapes (the Coca-Cola bottle) -- but it's our language that is most at risk. For some categories of products, including hair-care supplies and insecticides, the pool of relevant real words has effectively been used up, says Larsen. For companies, this means any new trademarks have to be made-up words. For the rest of us, the result is more insidious: whenever we talk about hair -- saying it's silky, or has shine -- our descriptive vocabulary is now made up entirely of brand names and marketing slogans.

The line between culture and intellectual property is already blurry in America, what with saturation advertising and popular entertainment constantly striving to put images inside our heads for profit. The current trademark-law system gives companies free rein to claim ownership of still more of our culture -- not just of things they've invented to sell, but of what we're already thinking.

If the shampoo peddlers can exhaust the supply of words like "silky," what can the brand-image peddlers do to the supply of images? When the '95 Seattle Mariners shocked the Yankees in the playoffs, John Calipari was there collecting royalties on their declaration of unbeatability. Polo Ralph Lauren has staked its claim on the whole realm of WASPy leisure -- up to the point, presumably, where it butts up against J. Crew's territory.

At every turn, something we think of as culture is being fenced off. And as far as the Lanham Act and the trademark holders are concerned, this is just fine. If we all have a little less room to think -- if Clevelanders can't look at their skyline without seeing the ® on the Rock and Roll Hall of Fame, or Bostonians can't get stuck in traffic without bringing ice cream into it -- well, maybe we'll just have to learn to think differently.

Er, think different(TM).

Tom Scocca can be reached at tscocca[a]phx.com.