Crowdsourcing a Trademark: What the Public Giveth, the Courts May Taketh Away

Abstract

There is a long tradition of trademark holders relying on the public to create designations that they then adopt as trademark. Historically, this has been a long slow process. From the individual’s use of the term, to the acquisition of secondary meaning could take years. Web 2.0 social media has the potential to speed up this process. Frequently, these are nicknames for well-known brands, so they are potentially quite valuable. Trademark law is ambiguous regarding who owns a designation created by the public, if the individual claiming the mark have not appropriated the mark by actually using it in commerce. Ownership of the mark is one of the elements of a claim of trademark infringement. The Public Use doctrine attempts to solve this problem by imputing the public’s non-commercial use of the designation as a commercial use for the benefit of the referent-mark holder, and so permits the referent-mark holder to appropriate rights in the mark without actually using it in commerce. The Public Use doctrine may not be a sound basis on which to claim a crowd-sourced mark; therefore, this article looks at alternative remedies that are available to the referent-mark holder, and concludes unfair competition or infringement by trademark dilution are better remedies.

Keywords: Trademark, Crowdsourcing, Public Use Rule, Public Use Doctrine, Well-known Marks, Public Coined Trademarks