The Semiotic Analysis of Trademark Law


Current thinking about trademark law is dominated by economic analysis, which views the law as a system of rules designed to promote informational efficiencies. Yet the economic analysis has failed to explain, because it is unequipped to do so, a number of concepts of fundamental importance in the law, most notably the concepts of trademark "distinctiveness" and trademark "dilution." This Article proposes that a more robust understanding of trademark law may be achieved by viewing the law through the lens of semiotics, a systems-theoretical field of knowledge, of which structural linguistics forms a part, dedicated to the study of signs and sign-systems.

The Article begins in Part I with a brief survey of semiotics. In isolation from each other, semiotic thought and trademark doctrine have developed remarkably similar accounts of semiosis, that is, of the workings of sign systems. While the Article notes certain homologies between the two fields of knowledge, its primary goal is the refinement of trademark doctrine. Towards that end, Part II analyzes the internal structure of the trademark. This structural analysis clarifies various ambiguities in trademark doctrine. Part III then urges on semiotic grounds that trademark distinctiveness be reconceptualized as consisting of two forms: source distinctiveness, which describes the trademark's distinctiveness of source, and differential distinctiveness, which describes the trademark's distinctiveness from other trademarks. In determining whether a trademark falls within the subject matter of anti-infringement protection, a court should consider whether or not it possesses source distinctiveness. In determining the scope of anti-infringement protection to be accorded to an eligible mark, a court should consider the extent of its differential distinctiveness. Part IV offers a historical account of the fall of source distinctiveness and the rise of differential distinctiveness as the cynosure of the law. This is the story of the emergence of the modern trademark as a "floating signifier." While the economic account continues to profess that trademarks do little more than minimize consumer search costs, much of modern trademark law is now directed towards the commodification of semiotic "sign value." Part V analyzes the concept of trademark dilution and distinguishes between two modes of antidilution protection: antiblurring protection, which seeks to protect relations of source distinctiveness and which is essentially an inverted form of anti-infringement protection, and uniqueness protection, which seeks to protect relations of differential distinctiveness and which is absolute in scope. Courts and commentators have embraced the former, "compromise" mode of antidilution protection as an alternative to the latter "radical" mode. Nevertheless, as if by its own semiotic logic, antidilution protection of whatever mode inevitably degenerates into the provision of absolute, in gross property rights. Part V also considers other issues in dilution doctrine and argues on semiotic grounds, most notably, that trademark tarnishment is not a form of trademark dilution and that the requirement that a trademark be inherently distinctive to merit antidilution protection is incoherent.

About the Author

Assistant Professor of Law, Benjamin N. Cardozo School of Law, Yeshiva University. B.A., University of Chicago, 1992; Ph.D., Princeton University, 1998; J.D., Yale University, 2000.

By uclalaw