Federal trademark law now protects certain marks against “tarnishment.” If a mark is associated with “bad” things such as drugs or sex, the theory goes, that may harm the seller’s reputation and dilute the mark’s “commercial magnetism.” The theory sounds plausible enough, in theory. But what if that is not how it works in practice?
In Trademark Tarnishmyths, Linford, Sevier, and Willis add to the growing literature that empirically tests this theory of trademark tarnishment. The authors conducted two experiments in which famous marks were associated with sex, drugs, or sacrilege. The authors assert that theirs is “the first test of whether drug-related and sacrilegious uses tarnish appropriated marks, in two separate studies.” (P. 9.)
In the first study, “subjects were shown images of target marks used to sell cannabis products or in off-color, sexual contexts.” (P. 1.) They found that, instead of decreasing the desirability of the target marks, these exposures actually increased or “burnished” the desirability of those marks.
In the second study, “subjects were shown banner ads with cannabis-infused Skittles and satanic-themed Sunday sales of Chick-fil-A sandwiches.” (P. 2.) They found that highly religious respondents “reported Chick-fil-A was less tasty” after being exposed to the sacrilegious imagery. But the same was not true for cannabis; “conservative respondents exposed to the drug-related stimuli reported Skittles were more wholesome compared to the control – another burnishment effect.” (P. 2.)
The authors conclude that “the case for tarnishment might be weak in circumstances where courts have been most willing to presume tarnishment occurs”—i.e., when a famous mark is associated with drugs or sex. (P. 2.)
Insofar as these studies cast doubt on the conventional theory on tarnishment, this has some important implications for trademark law and policy.
First, as the authors note, to the extent their results are generalizable, “courts should require some evidence of likely tarnishing effect before granting relief on a claim of dilution via tarnishment” instead of just assuming such an effect. (P. 9.)
Second, the authors suggest that “anti-tarnishment protection might well be due for congressional reevaluation or vulnerable to constitutional challenge on First Amendment grounds.” (P. 9.) Claims of trademark dilution, and tarnishment in particular, have always been in considerable tension with the First Amendment, as other scholars have noted. If the types of uses that courts have, to date, treated as presumptively tarnishing don’t actually tarnish—and may even burnish—the mark’s reputation, it’s hard to justify this (relatively recent) federal cause of action.
In light of expanding legalization of marijuana at the state level, I wonder whether cannabis would be viewed as “bad” by enough people to make it the best testing reference. After all, older cases dealt with things like cocaine. But considering the public reactions to the October 6 “Statement from President Biden on Marijuana Reform,” it appears that at least some politicians continue to think—or at least, think that their voters think—cannabis is, in fact, a seriously bad drug. It would be interesting to see what would happen if these types of experiments were run using other drugs, such as methamphetamine.
Overall, this is a very valuable addition to the trademark dilution literature, and I highly recommend it.
