Professor Barton Beebe & Professor Jeanne Fromer, New York University School of Law: Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion

Please note change of venue for this seminar - The Latner Room, St Peter's College

Abstract

American trademark law has long operated on the assumption that there exists an inexhaustible supply of possible trademarks.  With respect to word marks in particular, conventional wisdom has assumed that we will always enjoy a surplus of preexisting words available for exploitation as trademarks, and that in any case, trademark adopters will always be able simply to coin new words, the supply of which is assumed to be effectively infinite. In this paper, we present empirical evidence that fundamentally challenges these assumptions.  We use the U.S. PTO's recently released Trademark Case Files Dataset, consisting of information on some 7.4 million trademark applications filed at the PTO between 1870 and 2014, to show the surprisingly high proportion of English words already registered as trademarks in the U.S. and the limited availability of possible coinages not already identical or similar to registered word marks. We also show the high proportion of frequently used surnames already claimed as trademarks. Word mark depletion has begun to cause significant changes in recent years in the characteristics of newly-registered word marks.  The paper explores the implications for trademark law and policy of trademark congestion and depletion.

The series is open to everyone and registration is not required. Seminars are typically held in The Dorfman Room, St Peter’s College at 5.15pm-6:45pm (exceptions are noted on the event page).  Please report to the Porter’s Lodge on arrival for directions. Refreshments are provided. (Please direct enquiries to jennifer.hassan@law.ox.ac.uk).

Convenors: Graeme Dinwoodie, Dev Gangjee & Robert Pitkethly