Trademark's 'Ship of Theseus' Problem

Abstract

The story of the ship of Theseus has long presented a puzzle over the nature of identity. Preserving the boat over time, the ancient Greeks would remove its wooden planks as they rotted and replace them with new planks. The question arose: was this still the same ship?

The problem hits at an issue that is critical to trademark law but has largely been overlooked: namely, what is the identity of the entity that holds the mark? And how do we determine whether that has changed over time? The law provides straightforward answers: it assigns the mark to the business entity and then provides that entity with almost absolute discretion over use and exclusion. Trademark law cares little about whether the entity is still representative of the mark over time. This approach is problematic. It allows marks to drift away from their original meaning and become vessels for brand expansion. The corporate holder can then exclude all other players, including former employees, from using the mark to which they contributed. The legal entity holding the mark can peel away every layer of connection between the mark and its creators and yet still wield it in commerce.

The essay sketches out two potential pathways to address this ongoing dilemma: a more attentive examination of the connection between mark and economic firm, or a relaxation of the exclusive control that mark holders currently have over use.

Keywords: trademark, service marks, dilution, fissuring, assignment in gross, naked licensing

JEL Classification: K11, L2, L23, L24