From the Yale Law School Information Society Project, Lisa Larrimore Ouellette has written a compelling companion article that highlights many of the important issues she recently discussed at a presentation delivered at Oxford University.
Click here to download the article.
To provide our readers with a preview and overview of the truly important read for trademark practitioners and intellectual property law academics alike, we borrow from the abstract she has used to describe the thesis and contents of the 52 page paper, a paper sure to be receiving much justified attention in the coming months in the legal community and the IP law community in particular.
Borrowing from her abstract, her paper contends the following with respect to the value and utility of the Google Search Engine and its ability to function as a primary reliable source when seeking to determine the strength of a trademark and the likelihood that a particular trademark will be or is being confused with another trademark or several existing trademarks:
strength of a trademark — the extent to which consumers view the mark as
identifying a particular source — is difficult to evaluate in practice.
Assessments of “inherent distinctiveness” are highly subjective, survey
evidence is expensive and unreliable, and other “commercial strength”
factors such as advertising spending are poor proxies for consumer
perceptions. Courts often fall back on heuristics and intuition rather
than precise logical analysis.
But there is a simpler way to
determine whether, when people look for a mark, they mean to find a
certain product: Google. Google dominates the web search market by
correctly predicting what people think of when they type a word or
phrase, and Google results thus can increase the predictability and
accuracy of the subjective tests in trademark law. Courts have generally
given online search results little weight in offline trademark
disputes. But the key factual questions in these cases depend on the
wisdom of the crowds rather than expert judgment, making Google’s
“algorithmic authority” highly probative.
Through a study of
federal trademark cases and contemporaneous search results, I argue that
Google can generally capture both prongs of the test for trademark
strength: if a mark is strong — either inherently distinctive or
commercially strong—then many top search results for that mark relate to
the source it identifies. The extent of search overlap between two
different marks can also be relevant for assessing the likelihood of
confusion of those marks. In the cases where Google and the court
disagree, I argue that Google more accurately reflects how consumers
view a given mark." (Ouellette, Lisa Larrimore, The Google Shortcut to Trademark Law (January
3, 2013). Available at SSRN: http://ssrn.com/abstract=2195989).
As the Internet and Internet searches become an increasingly ubiquitous part of our society and their use as evidence in trials and as part of the trademark examination process increases, it will be interesting to see how the thesis presented in this paper holds up and whether courts and administrative agencies are resistant to the role of internet searches increasing and as such reticent of these online tools being given too much recognition or probative value in determinations of trademark strength and likelihood of confusion with other trademarks.