A world without trademark attorneys… frightening, isn’t it? (maybe more for me than for someone who isn’t a trademark attorney). It seems unlikely, but we may be inching closer to this apocalyptic scenario.
In Australia, a group of researchers, legal academics, and other organizations are collaborating on the creation of a computer program that they hope will remove the subjectivity from trademark infringement analysis. The goal is to develop a program which can calculate a similarity score between two marks. The score could be relied upon by businesses in choosing names and courts in determining trademark disputes.
This certainly isn’t the first time a computer has taken on tasks normally reserved for humans. IBM famously created computers that could beat world chess champions as well as win $1 million on Jeopardy!. Computers have also been able to discover laws of physics that took humans centuries to unearth. Oh, and don’t forget the more recent creation of a self-aware Mario.
But for all the trademark attorneys out there, please, take a deep breath. We’re not unnecessary (yet). In fact, most trademark attorneys would welcome the opportunity to remove some of the subjectivity in trademark analysis in order to be able to provide more certain advice to their clients. Unfortunately, removing all of the subjectivity is likely impossible.
Trademark infringement involves more than just the similarity of the marks themselves. The legal analysis involves balancing numerous factors. The type of goods or services sold is a major factor, and others include the channels of trade in which the products are sold, the sophistication of the consumers, the number of similar marks used on related goods or services, the intent of the defendant, and others. Thus far, the Australian project appears to be focused solely on the similarity of the marks.
Also, the scope of protection granted to a trademark can expand or contrast over time. The protection can even disappear entirely. We’ve lost a lot of good brands over the years to genericide, including every day words like aspirin, thermos, escalator, dry ice, cellophane and others. Even when trademark rights aren’t lost in their entirety, if similar marks are in use by third-parties without evidence of confusion, then the rights afforded to one owner may be more narrow.
If the project is successful, the computer program could serve as an additional resource for trademark attorneys. It could be a helpful tool in providing some objective assessment of risk that marks might be considered similar. If the “similarity score” is a 3 out of 100, it is likely a good choice. The score of 99 will hopefully be enough to deter your client from investing in its idea for Starbux coffee shops. But will businesses, lawyers, or courts really feel comfortable relying on a score of 60? Or 40? The program might help confirm the clear cases, but is unlikely to be helpful in the close calls, where objectivity is needed most.
On the other hand, the program could be helpful where the other factors weigh in favor of one party. A high (or low) similarity score would present another piece of objective, factual evidence that could help in motions for summary judgment. It would also be a lot cheaper than hiring a linguistics expert to analyze the marks.
The software could also be utilized in-house or by marketing and advertising firms to analyze new name candidates prior to providing it to the decision makers. Providing the similarity score for those high risk names could help avoid emotional investment in a name that is all-but-assured to be turned down by legal. I don’t care what your selling, the name “Nike” is going to be an uphill battle that you’re better off avoiding.
The project is likely to provide some very helpful insight in the future. But I think I’ll come into work tomorrow, just in case.