Flip Donkey Doodleplunk?

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Barton Beebe & Jeanne Fromer, "Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion", Harvard Law Review, February 2018:

Abstract: American trademark law has long operated on the assumption that there exists an inexhaustible supply of unclaimed trademarks that are at least as competitively effective as those already claimed.  This core empirical assumption underpins nearly every aspect of trademark law and policy.  This Article presents empirical evidence showing that this conventional wisdom is wrong. The supply of competitively effective trademarks is, in fact, exhaustible and has already reached severe levels of what we term trademark depletion and trademark congestion. We systematically study all 6.7 million trademark applications filed at the U.S. Patent and Trademark Office (PTO) from 1985 through 2016 together with the 300,000 trademarks already registered at the PTO as of 1985.  We analyze these data in light of the most frequently used words and syllables in American English, the most frequently occurring surnames in the United States, and an original dataset consisting of phonetic representations of each applied-for or registered word mark included in the PTO's Trademark Case Files Dataset. We further incorporate data consisting of all 128 million domain names registered in the .com top-level domain and an original dataset of all 2.1 million trademark office actions issued by the PTO from 2003 through 2016. These data show that rates of word-mark depletion and congestion are increasing and have reached chronic levels, particularly in certain important economic sectors.  The data further show that new trademark applicants are increasingly being forced to resort to second-best, less competitively effective marks.  Yet registration refusal rates continue to rise.  The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain. In light of our empirical findings, we propose a mix of reforms to trademark law that will help to preserve the proper functioning of the trademark system and further its core purposes of promoting competition and enhancing consumer welfare.

Before getting into the computation of "word-mark depletion" and so on, the authors cite some articles from the popular press:

Neal Gabler, "The Weird Science of Naming New Products", NYT 1/15/2015.
Justin Fox, "We're Going to Run Out of Company Names", Bloomberg 1/13/2017.
Rex Hupke, "Craft beer makers running out of names. How about Flip Donkey Doodleplunk?",  Chicago Tribune 1/7/2015.
Alistair Bland, "Craft Brewers Are Running Out Of Names, And Into Legal Spats", NPR 1/5/2015.
Ryan Mandelbaum, "We've Run Out of Beer Names and AI Is Here to Help", Gizmodo 8/3/2017.
Sam Richards, "FKA twigs, Slaves, Deers: are we running out of band names?", The Guardian 2/17/2015.
Kathleen Lee-Joe, "The beauty industry has run out of makeup names", DailyLife 1/16/2015.

Their proposals for reform:

To alleviate depletion and congestion caused by current registrants, we think it would be beneficial, straightforward, and administrable for the PTO to increase maintenance and renewal fees. […]

Another important policy lever directed toward current registrants that the PTO should adjust is the use requirement in trademark law, which should be tightened and more strictly enforced. […]

Certain reforms directed toward new applicants may also help to alleviate depletion and congestion by making it tougher to register marks, with benefits and costs similar to those discussed above for existing registrants. […]

They also argue against some other policy changes:

We consider two additional reforms that are more radical and whose effects on depletion and congestion are more difficult to predict. On balance, we think each is unlikely to result in net benefits to the trademark system.

If you're interested in this area, you'll want to read the whole thing (or at least skim it — the paper is 101 pages long…)

[h/t Neal Goldfarb]



21 Comments

  1. Phil Jennings said,

    February 22, 2018 @ 7:57 am

    Science fiction writers conjure names of companies and products for stories that peddle at eight cents a word. My cheap way of staying out of trouble is googling for "Zankofim" (for example.) If I get no hits, fine. So far I've never had to invest much time in coming up with a workable name. Perhaps LL readers know of a better method? Meanwhile from my superficial perspective there doesn't seem to be a problem.

    [(myl) Finding pronounceable strings of 7-17 characters that aren't trademarked is not hard, though the shorter the string, the harder it is. But the crucial modifier here is competitively effective trademarks. "Zankofim" is available (though I haven't checked for possibly-confusable alternate spellings), but is it a good name for a dating app, or a brand of lunch meat, or a line of gym clothes? Consider the quote from Harry Silverman on why he gave a new company the uninspiring name Cedant: "Every name we liked, either somebody already had it or it wasn't trademarkable or it meant something pornographic in another language."]

  2. Andreas Johansson said,

    February 22, 2018 @ 10:57 am

    "Uninspiring" isn't my first association for Cedant – it sounds like it should mean "cutting" or "striking", from Latin caedo (the actual Latin participle being caedens).

    (I'm not, of course, claiming this makes it a good trademark. Presumably they'd like to sell to people who aren't me.)

    [(myl) FWIW, my first association was cede "give up (power or territory)", and my second was decedent "a person who has died".]

  3. Y said,

    February 22, 2018 @ 11:15 am

    Apropos of which, one-word band names have surprisingly not been used up, even within such restricted domains as Death Metal.

  4. Doug said,

    February 22, 2018 @ 11:59 am

    The odd thing about "Cedant" as a company name is that "cedant" (or "cedent") already has an existing meaning in insurance. The "cedant" is the insurance company that buys reinsurance from [cedes premiums and losses to] a reinsurance company.

  5. Ed M said,

    February 22, 2018 @ 12:02 pm

    I believe Harry Silverman's business was called "Cendant". And it is no longer in operation under that name, through a series of corporate divestments going back a decade or so.

  6. cervantes said,

    February 22, 2018 @ 12:21 pm

    . This is a band name generator bot. You can enter an optional seed word, for example "duck" gave me this:

    Duck Disaster
    Unsocial Duck
    Protection Of Duck
    Republican Duck
    Duck Routine With The King-sized Amnesia
    Granted, the last one probably won't go platinum. Anyway, we're never going to run out of band names.

  7. cervantes said,

    February 22, 2018 @ 12:22 pm

    Sorry, forgot to close the tag.

  8. BZ said,

    February 22, 2018 @ 1:26 pm

    Ok, I didn't read it, but the idea that we're running out of good patentable names seems odd to me. A lot of famous company names are simple English words not having anything to do with products they sell (Apple, Oracle) or people's names (Disney, Hershey's). Surely we're not running out of those.

  9. Gregory Kusnick said,

    February 22, 2018 @ 3:21 pm

    BZ: According to a chart in the Bloomberg article, the explosion in registered trademarks took off in the early 1990s. All of the examples you give were trademarked well before that. (And I suspect that the choice of Oracle as a brand name did indeed have something to do with their core business of database products that can be queried for information.)

  10. aka_darrell said,

    February 22, 2018 @ 4:15 pm

    They've ran out of meaningful names. So I must have a list of the medications I take and why I take them. Alendronate is for what?

  11. Don Sample said,

    February 22, 2018 @ 10:07 pm

    BZ: And Apple Computers spent decades in trademark disputes with Apple Records.

  12. ajay said,

    February 23, 2018 @ 6:41 am

    I was about to say: if I remember, the Apple vs. Apple wars started up again when Apple brought out the iPod, which was seen as encroaching on Apple's turf.

    As for running out of proper names: we have, in the UK, both McLaren, which produces expensive and high-performance sports cars, and Maclaren, which produces expensive and high-performance pushchairs ("strollers"). For years I thought they were the same company. They're unrelated, and conceivably, if Maclaren were to diversify into powered wheelchairs and invalid scooters, they might come into conflict.

    So, yes, we are definitely running out of people's names, as anyone called McDonald who decides to go into the restaurant business will be the first to tell you…

  13. Andrew Usher said,

    February 23, 2018 @ 11:39 am

    Nonetheless it's certainly part of the problem that traditional sources of names – personal, place-derived, functional – are now unfashionable and every firm of any size 'needs' to have a 'unique' meaningless name.

    Of course other trademark reform would be worthwhile, but anything that reduces the demand for lawyers has near zero chance in this country.

    k_over_hbarc at yahoo.com

  14. Stephen said,

    February 23, 2018 @ 12:58 pm

    "So, yes, we are definitely running out of people's names, as anyone called McDonald who decides to go into the restaurant business will be the first to tell you…"

    Bur Mr MacDonald will be fine – so long as he is in Scotland!

    McDonalds sued a man owning one small restaurant in (IIRC) a fairly remote part of Scotland for trademark infringement because the man had used his own name, MacDonald, as the restaurant name.

    McDonalds lost lost because under Scots law (but not under E&W law) McX and MacX are different words, even though they mean the same thing.

  15. Adrian said,

    February 23, 2018 @ 1:18 pm

    @aka_darrell Alendronate is the chemical name. One of the tradenames, Binosto, is pretty good for explaining what it's for. The other one, Fosamax, rather relies on you knowing that alendronate is a biphosphonate.

    I did work for a while in medical brand-name creation. Generally speaking, an effort is made to connect the name with the condition, although some companies love panacean names. Could there be a shortage in names? Perhaps luckily for all concerned, governments make it quite hard to bring new drugs to market…

  16. Idran said,

    February 23, 2018 @ 1:29 pm

    @Andrew Usher: It's not that they're unfashionable. The paper specifically calls out that trend, and presents the fact that companies are getting recommended that practice by brand advisors and intellectual property experts specifically so that trademark applications don't get denied. They know that coined terms are less effective on the marketplace as a general rule, and they specifically say that they recommend companies use them anyway because more traditional trademarks are far more likely to collide with prior use by this point, and so are likely to cause more expense and time spent on new trademark applications within the company; thus they recommend that companies use coined terms to avoid (or at least minimize) the possibility of that happening.

  17. maidhc said,

    February 23, 2018 @ 9:57 pm

    I'm not sure I really buy this. Two examples of relatively recent companies: FitBit and GrubHub. Newly coined names that are short, catchy and descriptive of what the company does. I have continued faith in people's creativity.

    There are also plenty of examples of successful companies with not very attractive names. Coca-Cola, Kentucky Fried Chicken, Panda Express, K-Mart, CVS, Safeway. Or names that are positively misleading, like high end gourmet restaurant The French Laundry.

    The name is only one part of what makes a company successful.

  18. Chas Belov said,

    February 24, 2018 @ 5:57 am

    @cervantes: Then there's the Japanese band Bump of Chicken.

    As for Googling potential trademark names, do they still make recent searches available for display? The concern of course being that someone could see your search and decide to beat you to the Patent Office.

  19. Allan from Iowa said,

    February 24, 2018 @ 4:23 pm

    Chas, they definitely do that when you look up to see if your new trademark is available as a domain name.

  20. J.W. Brewer said,

    February 25, 2018 @ 10:30 am

    "Cendant" was/ is a holding company that tended not to use the corporate name as a trademark in actually offering goods and services (which were offered under pre-existing and often well-established trademarks that had come under its ownership, such as "Avis" for rental cars and "Ramada" for hotels), so having a bland/meaningless corporate name that didn't really indicate anything about what the company did or didn't do may well have been a feature rather than a bug. It resulted from the merger of two companies known as HFS and CUC, which were themselves perfectly meaningless names once they'd become initialisms such that people didn't necessarily know the original, more boringly descriptive, full names (e.g. HFS was "Hospitality Franchise Services").

    And presumably the imperative to come up with a brand-new name for the merged entity rather than just calling it HFS or CUC had more to do with the politics and personalities involved, not with a specific marketing strategy that demanded it.

  21. Robert said,

    March 7, 2018 @ 2:43 am

    @Stephen

    It seems one does not need to go to a remote area of Scotland, or even have a different spelling. There is a "McDonald's Bakers" in Union Street in Glasgow, with no connection to the American burger franchise.

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