Abstract This essay attempts to explore trademark law and the marks themselves from a semiotic viewpoint to provide a deeper understanding to (trademark) law as a system of signs. Although the language of trademark law may suggest slightly different meanings, for the purpose of this essay “trademark” will refer to an area of law (unless otherwise indicated) and “mark” will refer to the individual sign. The first part of this essay will provide a brief overview of semiotics. Second, it will outline a general look at trademark law as set forth in the Lanham Act. The third section is a semiotic approach to provide a deeper understanding of trademark law. Finally, the essay will analyze a seminal trademark case whilst using semiotics to address legal meaning within the case. Semiotics teaches that no absolute meaning can be found. This essay, then, attempts to secure at least one particular meaning of the Qualitex case and what it means in trademark law today.

 

Semiotics is the study of signs, symbols and meanings, and their interrelation with one another in the realm of human interaction and human life. While using semiotics in the legal field is a relatively new concept [10], semiotics can be used as an instrument in understanding the law and the lawyer’s function within the law. While law (and trademark law) is a system of signs, law does not function easily within semiotics because lawyers attempt to create a single meaning. However, understanding and using semiotics can provide lawyers with an upper hand in the courtroom, can provide lawyers with a deeper grasp of legal arguments or decisions, and can provide lawyers with a tool in managing legal discourse. The semiotically informed attorney will focus on the signs and symbols in law (the legal texts, case names, and other symbols) and thus contribute more fully to legal discourse. Semiotics is very useful and insightful in a variety of legal fields (for instance, it can be used to obtain a better understanding of family law or criminal law and how one or more legal texts can be employed by an attorney); however, this essay will focus on trademark law.

Conceptually, it is not difficult to view trademark law as a system of signs, since a single, and sometimes very simple mark can signal to the public the goods to be consumed, the source of those goods, and the quality associated with those goods along with a number of other pieces of information. Positivizing those legal signs is easier for the jurist than it is to understand and bear in a practical mind (as a semiotician would) that multiple meanings exist.

Signs take the form of words, images, sounds, gestures, objects, and, among many other things, colors. “Signs can be something active and positive, or something negative, so that an absence of an action may also be interpreted as a sign”([6] § a).  Signs convey a meaning to those who can interpret them. Semiotics, therefore, studies sign meanings and how reality is represented within culture and its sign-complexities. Signs are embedded in language and culture – a word, image or sound may be a sign in one culture but have no meaning in another. Further, no culture exists without symbols. Symbols introduce order to a culture, which leads to language; language allows people to be aware of their selves and their reality. Within a culture, individuals attach meaning to symbols or signs – as a result, those signs transform from an Umwelt (everything around those individuals and open to achieve a meaning) to a Lebenswelt (everything having become meaningful to those individuals [1]). Semiotics, then, would be everything and nothing; semiotics is of space and time, changing as society changes; and semiotics is defined by what it does rather than what it is.

Algirdas Julien Greimas proposed the semiotic notion of signification (individuals perceive what is significant to them). ([6] §6) By means of signification, life can be understood as a narrative. The narrative consists of a surface (the phenotext) and the deep structure (the genotext) that provides meaning to the surface. To understand the signification of a particular theory, one must uncover and interpret the meaning of the genotext in addition to the phenotext. To do so, it must be noted that each word or symbol on a surface only functions as a sign because its opposite exists within the deep structure. The existence of its opposite is the ground for the symbol having a meaning. From this, many semioticians make use of the Greimassian square as a means of recognizing the surface sign in addition to the underlying opposite that gives the sign meaning [9].  Visualizing the sign and its opposites allows a better understanding of underlying meanings.

            Greimas’ signification theory is especially relevant in the legal field in which attorneys strive for a full understanding of legal realities. Lawyers are taught to speak the language of law and interpret legal signs in order to participate in- and manage legal discourse. Legal language has signification to the attorney because he or she must recognize the sign meaning and their underlying opposites. Individuals who are not part of the culture of law cannot communicate within the law and understand legal realities because legal signs (for instance what constitutes a “breach of contract”) have no meaning to them.

 

Jacques Lacan focused the semiotics of identity as embedded in language. The latter empowers human beings to interpret and give meaning to symbols and signs, and to create symbols and signs that can be understood as a result of language. However, an individual cannot take part in discourse unless it has a sense of self and one only gets such a sense of self (or an identity) through language. An illustration of this point is that a child has no sense of self until others tell him that he is separate and distinguished from others – then the child refers to himself as “I” rather than the way others refer to him, for instance using his given name.

Just as a child has no sense of its self until others tell him, individuals have no legal identity until a lawyer tells them so. For example, if Bob and John make promises to one another and Bob does not uphold his promise, John has no legal identity until a lawyer tells him that Bob has breached their contract. Now that the lawyer has said to John that he has a legal identity (of plaintiff in a breach of contract claim), John is thrust into participating in law’s master discourse. Knowing one’s identity (in life and law) allows the individual to understand how others relate to and interact with his self.

 

We focus furthermore on Charles Sanders Peirce's introduction of the triadic sign model – a triple connection of sign, thing signified, and cognition produced in the mind ([16] Vol. I, 237): 

A sign, or representamen, is something, which stands to somebody for something in some respect or capacity. It addresses somebody, this is, creates in the mind of that person an equivalent sign, or perhaps a more developed sign. That sign which it creates I call the interpretant of the first sign. The sign stands for something, its object. It stands for that object, not in all respects, but in reference to a sort of idea….

 

Peirce’s sign consists, then, of three elements: The first element is the representamen, the perceptible object, the “vehicle conveying into the mind something from without.” The second element is the object, or “referent”, which can be a physical “object of the world” or a mental entity “of the nature of thought or of a sign.” The third element, is the interpretant, which Peirce defined as “[creating] something in the Mind of the Interpreter,” the “proper signifcante effect,” the “proper effect of the sign.” This triadic sign model can be visualized in the form of a “semiotic triangle” as follows:

 

 

 

 

Interpretant (emerging thought) Thirdness

 

 

 

 

Representamen (perceptible object)                  Referent (attachment to object)

Firstness                       {Cultural Context}        Secondness

 

Peirce’s semiotic approach differs from others in that his “master-pattern” for semiotics is not human language, but cognition, which pertains to the structures and processes of thought. ([16] 637)  While Peirce concedes that there are thousands of types of signs (the whole world being compose mostly of, if not entirely of signs), he reduced signs to three categories: (i) iconic (a sign in which the representamen resembles or imitates to some degree the object to which it refers; i.e. scale models); (ii) indexical (a sign in which the representamen is related in some causal, physical way to the object; i.e. medical symptoms); and (iii) symbolic (a sign in which the representamen and its object is purely a matter of convention; arbitrary) ([16] Vol. I, 637; Vol. II, 247ff.) As will be discussed later in this essay, trademarks are also reduced to, and appear within these categories. A different but nevertheless related approach was proposed in Ferdinand de Saussure's "didactic sign" model, (which can for instance be illustrated with the sign: "book") where the sound or appearance of the word “book” acts as a signifier and stands for the concept of a book as a signified. De Saussure focuses on the linguistic aspect of the signified where Peirce’s interest is in how the representamen and referent work together to create the interpretant in the human mind. Law, especially trademark law, can be understood in the light of Peirce’s triadic model. We thus often refer to a semiotic triangle as an illustration of Peirce’s semiotics.

 

The Lanham Act section 45 defines “trademark” including “any word, name, symbol, or device, or any combination thereof…used by a person…to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others to indicate the source of the good, even if that source is unknown.” ([18] §1127). An owner of a registered mark only has rights as long as the mark remains a distinctive sign, identifying the products or services to the source of those products or services. If consumers no longer connect the mark with the source of the products or services, then no trademark exists. The Restatement on Unfair Competition defines the criteria for distinctiveness as follows:

A word, name, symbol, device, or other designation, or combination of such designations, is “distinctive” if:

(a) the designation is “inherently distinctive”, in that, because of the nature of the designation and the context in which it is use, prospective purchasers are likely to perceive it as a designation that, in the case of a trademark, identifies goods or services produced or sponsored by a particular person, whether known or anonymous, or in the case of a trade name identifies the business or other enterprise of a particular person, whether known or anonymous, or in the case of a collective mark, identifies members of the collective group or goods or services produced or sponsored by members, or in the case of a certification mark, identifies the certified goods or services; or

(b) the designation, although not “inherently distinctive,” has become distinctive, in that, as a result of this use, prospective purchasers have come to perceive it as a designation that identifies goods, services businesses, or members in the manner describe in Subsection (a). Such acquired distinctiveness is commonly referred to as “secondary meaning.” [7]

 

Similarly, if the mark is or becomes generic (i.e. “cellophane” (which lost its trademark) for thin, transparent sheet made from regenerated cellulose) or misleading, the owner can lose protection for the mark, as the purpose of trademark law is to allow words, names, symbols or devices to function as a sign to consumers.

            As previously stated, marks can be words, but words are classified in trademark law (akin to sign indexing in Peirce’s theories):

(i) “coined” words that have no meaning except as a mark (i.e. XEROX); 

(ii) “fanciful” words that are invented for the sole purpose of functioning as a mark that may bear a relationship to another word or may be an obsolete word (i.e. SWATCH);

(iii) “arbitrary” words in common language but neither suggests or describes any ingredient, quality or nature of the product with which it is used (i.e. APPLE);

(iv) “suggestive” words suggest the product without actually being descriptive of it (i.e. ZIP-LOCK); or 

(v) “descriptive” words draw attention to an ingredient, quality or nature of the product (i.e. TENDER VITTLES).

However, trademarks have also been granted in sounds (NBC’s three chimes), scents (plumeria blossoms on sewing thread), shapes (of a Coca-Cola bottle), and colors (as discussed below in the examination of Qualitex v. Jacobson Products).

Coined, fanciful, and arbitrary marks are afforded the strongest trademark protection, as any meaning attached to such marks is inherently distinctive and meaningful. Suggestive and descriptive marks require a showing of distinctiveness, or that consumers have attached secondary meaning separate from any underlying meaning – a showing that the marks serve as a trademark sign of the product source rather than merely serving as a linguistic sign. Marks are protectable only within the geographic areas in which they have attained meaning or possess a secondary meaning to the consumers. Holders of marks, whether registered with the U.S. Patent and Trademark Office or not, can commence legal actions for infringement should an interloper use a mark so substantially similar as the holder’s mark so as to cause confusion to consumers. 

 

The entire area of trademark law can be understood as a “system of signs designated to facilitate the commodification of social distinctions.” ([4] 624) Jean Baudrillard, among others, suggested consumption (i.e. the purchase of commodities) might be understood and analyzed “as a system of communication and exchange, as a code of signs continually being sent, received and reinvented—as language.” ([4] 623; [3] 93.) If there is such a “language of commodities”, the Lanham Act is used by trademark lawyers to interpret that language, in particular the narrative of trademark law, and understand the signification of those commodities. The surface and deep structure of the Lanham Act provides trademark holders with a legal identity, presenting the rights and duties of the holder. Lawyers participate in this trademark legal discourse by registering marks as status goods (sending the sign); consumers then consume the marks, signaling status (receiving the sign); businesses then perform the duties and protect the rights provided by the Lanham Act to preserve the mark’s status-signaling function (reinventing the sign). This premise can be visualized with the below Greimassian squares:

 

 

 

 

Lawyers participating in trademark law, then, have the daunting task of understanding and interpreting the language of law and the language of trademark law, or the language of commodity, which are distinct but interrelated. Further, the latter has been extended and became more complex in the ever-growing marketplace. Consider for instance the problem posed by the Internet: domain names pose a new and complex issue to be considered by trademark law. One example of domain names serving as symbols and becoming part of trademark discourse is discussed in eBay, Inc. v. Perfumebay.com, where the court determined that the domain name 'Perfumebay.com' created confusion to the public. Formulated in another way, when consumers saw the domain name 'Perfumebay.com', it was likely that the signifier would not signify Perfume Bay (the owner of the domain name), but that in the minds of consumers the domain name would signify eBay because it uses the eBay’s mark within the domain name (506 F.3d 1165 1172 (9^th Cir. 2007). This example illustrates the complexity and rapidly changing nature of trademark discourse, and supports the assertion the trademark law is a system of signs that changes as culture changes.

The eBay case also demonstrates that marks can be viewed in light of the Peirce’s semiotic triangle. Barton Beebe, author of an article upon which this essay is based, describes:

First, the trademark must take the from of a tangible symbol [which] constitutes the trademark’s signifier…Second, the trademark must be used in commerce to refer to goods or services. These goods or services constitute the trademark’s referent. Third and finally, the trademark must ‘identify and distinguish’ its referent…by identifying the referent with a specific source and that source’s goodwill. This source and its goodwill constitute the trademark’s signified. ([4] 646)

 

In the eBay case, the mark (“ebay”) is the signifier, the referent is the domain name (“perfumebay.com”). The signifier-referent relation here signifies eBay, Inc. rather than Perfume Bay – this is “confusion” within trademark law, as the signifier does not signify the correct signified. This mark confusion can be represented through the semiotic triangle below:

 

Signified - Interpretant (eBay, Inc.) Thirdness

 

 

 

 

Signifier - Representamen (ebay)                                   Referent (perfumebay.com)

Firstness                                                                       Secondness

 

Much of trademark law has developed in light of the triadic framework. While the structure of trademarks have changed in the light of several recent trademark cases (for instance, marks need not necessarily be attached to a particular commodity in order to give rise to trademark infringement), this structure remains relevant as many courts will construe the facts to fit within the semiotic triangle framework, as the Boston v. Dallas case shows ([5] 510 F.2d 1004), where the infringer was selling the trademark itself, without the mark being affixed. The Court, although presented with no referent, created one by stating that the infringement caused later affixation to a commodity.

            As discussed above, a mark must be distinctive in order to serve as a signification of source. Source distinctiveness describes the extent to which a trademark’s signifier is distinctive of its signified ([4] 625). This characteristic implies a semiotic approach to the Lanham Act’s attitude pertaining to generic marks: if there is little or no source distinctiveness, or the signifier does not distinguish the signified, the mark is generic. Differential distinctiveness describes the extent to which the mark’s signifier is distinctive from other signifiers in the trademark system. This is a semiotic approach to the trademark concept of confusion – if the interloper creates a mark that has little or no differential distinctiveness, it will cause confusion to the interpreter and give rise to a trademark infringement suit, as the issue in eBay showed. That idea can again become visualized through the use of a Greimassian square:

 

 

It is important to mention here that value in the mark arises from the differential distinctiveness. Differential distinctiveness gives rise to the source distinctiveness or source identity, and value arises from the relation between one specific mark against all other marks. For instance, a swoosh () on a tennis shoe has differential distinctiveness sufficient to give rise to source distinctiveness: Nike. The Nike mark has value because it is distinctive as against other marks such as Reebok, Adidas or some other tennis shoe brands. Sign value does not only signal high status, however. A commodity has various use values, only one of which may be high status. Pay-Less Shoes Store has sign value, but does not signal high status – rather it may signal affordability ([4] 643). Value, then, is a conspicuous display of distinctiveness; value is inexhaustible and renewable. In other words, companies seek to maximize the sign value of their brands, products or services, but do not necessarily seek to enhance the prestige of those brands, products or services. Rather, companies simply seek to enhance the mark’s distinctiveness to raise the brand’s profile ([4] 644).

The semiotic triangle is useful again when reviewing the requirements for obtaining trademark protection in a mark. Qualification can be broken down into three elements: (i) tangible sign (word, name, symbol, scent, color, etc.); (ii) use (actual use in commerce by manufacturer or seller of goods or services); and (iii) function (to identify and distinguish the seller’s commodities from commodities made or sold by others). The term “function” is used here to mean functioning as a sign. This differs from the use of the term “functional” which we use later in this essay.  A tangible sign is the signifier, referring specifically to the perceptible form of the mark. "Use in commerce" constitutes the mark’s referent. Further, marks must “identify and distinguish” its referent by identifying the referent with a specific source and that source’s goodwill –the source and its goodwill constitute the trademark’s signified. This concept is depicted as follows:

 

 

Signified - Source and Goodwill

 

 

 

 

Signifier (good/service)                                     Referent

                         Mark                                                   Use in Commerce

 

Trademark law has enforced the triadic model by requiring affixation (of the mark to the product or service) and use in commerce in order to qualify for protection, creating a link between the signifier and its referent. Trademark law's prohibition of assignments or leases of marks “in gross” further supports this triadic model – a company cannot sell or license the mark without the accompanying goodwill. Goodwill would be the signifier and its referent as well as the attachment of meaning to the mark. These create the emerging thought. A mark is merely a symbol of its goodwill and has no independent significance apart from the goodwill it symbolizes. This doctrine also enforces the link between the mark’s signified and its referent, because if the trademark holder engages in “naked licensing,” or fails to exert control over the quality of the goods licensed and associated with the goodwill, then the mark is deemed abandoned under the Lanham Act. ([4] 647) In Gorenstein([8] 874 F.2d 43, 435) the court stated: “The owner of a trademark has a duty to ensure the consistency of the trademarked good or service. If he does not fulfill this duty, he forfeits the trademark…. .The purpose of a trademark, after all, is to identify a good or service to the consumer, and identity implies consistency and a correlative duty to make sure that the good or service really is of consistent quality, i.e., really is the same good or service”

            The Lanham Act does not allow trademark protection for marks that are deemed “functional”. ([11] 1052§e) The functionality doctrine serves to prevent the merger of signifier and referent. ([4] 661) Trademark law has defined functionality in two ways: (i) as being “de facto functional” (functional under the standard dictionary meaning, such as in Webster [19] "as of or having a special activity, purpose, or task; relating to the way in which something works or operates" — which may still be able to receive trademark protection if secondary meaning attaches) or (ii) The “de jure" functionality (functional as a matter of trademark law) can per se not be protected under trademark law [18].  De jure functionality has been defined as a mark or element of a mark necessary to allow others to compete effectively within the field of commerce. For instance, the fluted design of a beverage can’s sidewalls is “one, if not the best, way” of strengthening a can’s sidewalls and was therefore deemed functional as a matter of trademark law ([4] 661). Aesthetic features have also been deemed to be de jure functional in some situations, when granting exclusive rights in such features would put competitors at a non-reputation-related competitive disadvantage. Beebe describes this problem with functionality as a “semiotic threshold”, which occurs where a sign represents a meaning beyond pure functionality. As Beebe quotes, and Roland Barthes observed, that by an “inevitable” process of “semantization,” even the most ordinary of functional objects may cross this semiotic threshold and become “pervaded with meaning:…. [A]s soon as there is a society, every usage is converted into a sign of itself.”  Barthes’ and Peirce's observation that almost everything in the world becomes a sign, puts the semiotic threshold relatively low. Translated in terms of trademark law, one can say that the de facto functional aspects of a commodity do not pass the semiotic threshold unless they signify a secondary meaning (having source and differential distinctiveness). De facto elements of the mark cannot receive trademark protection in cases where the signifier is merged with its referent because here, elements of the mark do not function as a sign. One concludes that if an element of a mark is deemed de jure functional (the elements are generic, public domain, or necessary to allow for competition in the marketplace), the mark cannot function as a sign in trademark law. The trademark semiotic threshold, therefore, seems to be higher than where Barthes puts it.

 

In Qualitex Co. v. Jacobson Products Co., Inc., the Supreme Court of the United States was confronted with an issue of whether a color alone was sufficient for trademark protection. Since the 1950’s, Qualitex used a special shade of green-gold color in the pads that it manufactures and sells to dry cleaning businesses for use on dry cleaning presses ([17] 159). The picture of a Qualitex dry cleaning pad is reproduced below:

 

 

In 1989, Jacobson Products, a competitor of Qualitex, began selling its own dry cleaning pads colored in a similar green-gold color. In response to Jacobson’s use of the green-gold color, Qualitex registered the color with the U.S. Patent and Trademark Office and added a trademark infringement claim to its ongoing unfair competition claim. The Lanham Act does not require registration of a mark for the institution of a suit or dilution under Unfair Competition. However, to sue for trademark infringement under the Lanham Act, Qualitex was required to register the mark.

Until the decision in Qualitex, courts have differed as to whether or not the law recognizes the use of color alone as a trademark [14], [15]. For that reason, the U.S. Supreme Court granted certiorari, holding that there is no rule absolutely barring the use of color alone in trademark law ([17] 1302). The Court’s rationale in deciding color can serve as a trademark has semiotic relevance, considering both the surface and deep structure of the Qualitex opinion, and how Peirce’s triadic model was upheld by this opinion. 

In determining that color alone could satisfy the Lanham Act’s requirements for trademark protection, the Court stated that because “human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning”, the language of the Lanham Act, read literally, does not seem restrictive.  The Court thus echoes Barthes’ and Peirce’s theories that anything (or nothing) can serve as a sign. If a shape, sound, or fragrance can act as a symbol for trademark protection, a color could as well. Justice Breyer explained “it is the source-distinguishing ability of a mark—not its ontological status as color, shape, fragrance, word, or sign” that qualifies it for protection under the Lanham Act ([17] 1304). Trademark law thus requires that the signifier and referent relate to its signified – it does not matter in which form the signifier appears. Color as a mark can be viewed in the semiotic triangle as follows:

 

Signified (Qualitex)

 

 

 

 

Signifier (green-gold color)                                            Referent (dry cleaning pads)

Mark                                                                            Use in Commerce

 

           

A central question in Qualitex concerns aesthetic functionality. As discussed in Section III of this essay, functionality will serve as a bar to trademark protection. Mark functionality seeks to promote competition by protecting source reputation since it inhibits legitimate competition by allowing a producer to control a useful product feature. From a semiotic point of view, if the green-gold color is aesthetically or otherwise functional, it should not be able to serve as a signifier within trademark law because competitors need to make use of that color as well. The Court determined that the green-gold color of Qualitex dry cleaning pads served no cost or quality function, nor was the color necessary for the pad to operate. The Court determines color can serve as a form of functionality and serve as a bar to trademark protection on its own. This is not to say that businesses cannot use color in conjunction with other symbolic elements that would, together, serve as the signifier. 

All this can be viewed in the Greimassian square as follows:

 

           

Jacobson argued that allowing color alone to qualify as a mark would produce uncertainty and irresolvable disputes about what shades of color a competitor can use without infringing upon a registered mark ([17] 1305). Jacobson essentially made the argument that issues of sufficient differential distinctiveness among colors would arise if color alone served as a mark. For instance, if Jacobson’s dry cleaning pad were more gold than green, would it provide sufficient differential distinctiveness and subsequently provide for source distinctiveness to allow for trademark protection? The Court rejected Jacobson’s first argument indicating that colors can provide adequate source and differential distinctiveness (the color providing sufficient secondary meaning) just as any other symbol serving as a mark. Further, Courts can, and often do, make the determination whether two colors (or other words, sounds, symbols, or devices) are so similar as to cause confusion to the public. Semiotically, the Court is making the assertion that colors convey meaning and function as a sign, just as words do. If no meaning attaches to color (or the signifier does not reference the signified), then there is no trademark protection.

            Trademark infringement cases often make use of consumer surveys to show that there is indeed a signifier-signified relation that exists in consumers’ minds when those consumers come in contact with a mark. Thus, if consumer surveys indicate that a defined set of consumers (dry cleaning businesses) relate Qualitex with the green-gold pads, the green-gold serves as a symbol. Courts are concerned with defined sets of consumers. Trademark consumer sects are treated like cultures – where a mark may have meaning to one sect of consumers, it may not to another. Thus, in dry cleaning businesses, the green-gold color has meaning, where, for instance, in the shoe industry it may have no meaning or a different meaning.

            The Court also rejected Jacobson’s second argument, which was that allowing trademarks in colors would create “color depletion”, or that eventually there would not be enough colors for each competitor to participate in the commodity market ([17] 1205-06). The Court rejected this argument through the use of the functionality doctrine. In other words, competitors of Qualitex will not be put at a non-reputation-related disadvantage as there are enough other colors available to Jacobson (and other dry cleaning pad manufacturers) in order to keep from infringing upon Qualitex’s established goodwill, or to keep from infringing upon the signal the green-gold color conveys to consumers in the dry cleaning industry. If the color becomes functional, trademark law can no longer protect it. If for instance customers of green farm equipment want their equipment to match, the color becomes de jure functional. The Court’s rationale implies that there are so many colors available that one industry will never deplete the possibilities. This can be viewed in light of the below Greimassian square:

 

 

            Jacobson makes a third argument against allowing for trademark protection in color alone by referring to past court cases that supported its proposition [17], [12]. The Court refers to past cases as dicta, indicating it as not being an appropriate genotext for understanding the signification of the mark at bar. This illustrates a point made in the first section of this essay – the law, as a system of signs, is fluid and changing as society changes. The dicta relied upon by Jacobson appearing in A. Leschen no longer applies to trademark law, as the Court articulates, because of the ratification of the Lanham Act.  On the surface of A. Leschen, the court provided dicta that readers interpreted later as excluding color as a proper basis for trademark protection. In creating the surface of A. Leschen, the court relied upon the then-current common law definition of trademark (Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976).

            After the decision in A. Leschen, the Lanham Act, which had changed the meaning of trademark, was instituted. While the textual definition of “trademark” remains almost identical to trademark defined in 1878 as “consisting[ing] of a name, symbol, figure, letter, form, or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells to distinguish the same from those manufactured or sold by another”, the Court now interprets “trademark” as a more expansive term by reading other parts of the Lanham Act. This provides a good example of needing to understand the genotext in order to gain a proper understanding of the phenotext. The textual definition of trademark appears the same, but the meaning (the text as a sign) has changed because of the institution of the Lanham Act.  The Lanham Act extended protection to descriptive marks by making clear that “nothing…shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s good in commerce.” [11]  Thus, as the underlying texts that the Court used in generating the surface of Quilatex changed, so did the meaning of “trademark”. The new interpretation of “trademark” allows color alone to be protected by trademark law so long as it meets the requirements of having secondary meaning and use. The Court further delves into the genotext of the Lanham Act, and supports its assertion that color is a proper basis for trademark protection, by indicating that a Congressional change in the Lanham Act left the language in Section 2 of the Lanham Act unchanged and consistent with the determination in In re Owens-Corning Fiberglas Corp. (774 F.2d, 1116, 1128 (CA Fed. 1985), the adoption of a Patent and Trademark Office policy permitting registration of color as a trademark, and a report written by the Trademark Commission which recommended a broad reading of things which function as a mark to include color ([17] 1307).

            Finally, Jacobson argued that there is no need to permit color alone to function as a mark because businesses can already use color as part of a word, name, symbol or device and that the company can rely on trade dress (prohibited under § 43(a) of the Lanham Act) if a competitor’s use of the same or substantially similar color causes confusion to consumers ([17] 1308). The Court quickly dismisses this argument, and includes more practical reasons. The Court indicates many businesses may manufacture and sell commodities that cannot support the placement of a word or symbol onto the product. Thus, the business may want to use the color alone to signal to the consumer the source and value of the commodity. Further, the Court maintained that trademark law provides protection to the business that trade dress cannot ([18]§§1124, 1072,1065,1057); its rationale can be viewed in light of yet another Greimassian Square:

 

The Qualitex case provides a complex but excellent example of the pervasiveness of semiotics both in the law and in trademark law. Trademarks are signs of source and value to consumers (and thus inherently a source of semiotics); the Court uses semiotics in determining that color alone can serve as a mark or a sign of source and value, deserving of trademark protection (indicating the signaling power of color marks); and semiotics can be used to attain a deeper understanding of the Qualitex opinion and the law that emerges from the opinion. The Qualitex case name has become a sign itself, having a certain meaning to trademark law attorneys and those who participate in trademark law master discourse. Similarly, the Qualitex name became a sign on its own with a certain meaning to trademark law attorneys and those who participate in trademark law master discourse [13].

 

 

 

Using semiotics allows a lawyer to acquire a deeper look at and understanding of legal realities. This may provide the attorney with the upper hand in litigation or enable the lawyer to maximize his or her effectiveness for the client. Moreover, using semiotics (a) to analyze the phenotext and genotext of legal texts, (b) to create Greimas’ semiotic square and (c) to understand law as a narrative allows for a greater appreciation of legal meaning. “Law is such a complex character on our human stage. As character, it is also a composite, complicated, continually evolving idea. Law is a system of signs. It is a standard-bearer of social value” [10].

            Lawyers use semiotics to manage legal discourse. Semiotics helped maintain a balance in law in a rapidly changing and ever-growing society. Awareness of how each legal concept evokes meaning allows an attorney to deconstruct legal reasoning, and to identify the conflict as the framework for a legal issue and the values embedded in the terms used when making legal arguments.

            Trademark law is a vast area of the law that requires an understanding of both the language of trademarks and the language of the law. Trademark law uses words, sounds, scents, colors, symbols and devices to signify meaning to consumers – trademarks are signs. Thus, marks are not an irreducible, indivisible piece of property (the trademark holder has no rights in the signifier alone, but the goodwill signified as a result of the signifier and referent interacting). They are rather relations of reference that are valued on how marks relate to one another within culture.

            Trademark law has become such an important and specialized legal field that trademark law itself has become a sign of general and global economics. This additional level of signification presents an interesting yet complex issue surrounding trademarks. Marks serve as a sign of commodities and source, which give rise to a need for legal identification, interpretation and protection; trademark law, in creating that legal identity for marks, has become a sign of the economics of commodities, which requires law in and of itself to be a sign and to give meaning to trade.

            Because of the complexity of multi-level aspects of trademark law as a system of signs, this essay has focused primarily on integrating semiotic knowledge into the legal field of trademarks and neglects to go into further detail about how trademark law serves as a mark itself. For this essay, it is enough to begin to understand how especially important semiotics is to a lawyer, in other fields of law and particularly in trademark law. Lawyers can make use of their semiotic skills on a number of levels in trademark law (from using the genotext and phenotext of legal texts to determine what marks are viable, to considering how trademark law uses the semiotic framework to function, to considering how trademark law has become a mark of global economics), making this area of law especially significant in semiotics and law.

1.         Bains, Paul (2006) The Primacy of Semiosis: An Ontology of Relations. (Toronto UP).

2.         Barthes, Roland (1967) Elements of Semiology New York.

3.         Baudrillard, Jean (1970, 1998) The Consumer Society: Myths and Structures. Sage Publishers.

4.         Beebe, Barton (2004) The Semiotic Analysis of Trademark Law, 51 UCLA L.R. 621, 627 Id. at 630.

5.         Boston Professional Hockey Ass'n v. Dallas Cap & Emblem, 510 F.2d 1004.

6.         Broekman, Jan. M. (2009) The Roberta Kevelson Law and Semiotics Seminar Course Book. Pennsylvania State University, Dickinson School of Law. See: (a) Introduction. (b) Peirce and Legal Semiotics. (c) Postmodernists.

7.         Competition — Third Restatement of Unfair Competition, § 13.

8.         Gorenstein Enters., Inc. v. Quality Care-USA, Inc., (1989) 874 F.2d 43`, 435 (7^th Cir.)

9.         Greimas A. J. & Rastier, Francois (1968). The Interaction of Semiotic Constraints. In: Yale French Studies No. 41: Game, Play, Literature. Yale UP.

10.       Kevelson, Roberta (1988). The Law as a System of Signs. New York: Plenum Press.

11.       Lanham Act (2000) §2(e), 15 U.S.C. § 1052(e)

12.       Leschen & Sons, (1906)).A. Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166,71, 26 S.Ct. 425, 426.

13.       Morris, Charles (1955). Signs, Language and Behavior (George Braziller).

14.       NutraSweet Co v. Stadt Corp.,(1990) 917 F.2d 1024, 1028 (CA7)

15.       Owens-Corning Fiberglas Corp. (1985), 774 F.2d 1116, 1128 (CA) (Note the term “Fiberglas” is a mark distinguished from the common word “fiberglass” as used within our natural language)

16.       Peirce, Charles S. (1934). Collected Papers of Charles Sanders Peirce Vol I & II, (Charles Hartshorne & Paul Weiss eds.,) 372

17.       Qualitex Co v. Jacobson Products Co., Inc., (1995). 514 U.S. 159, 115 S.Ct. 1300f .

18.       USC: (2000) 15 USC

19.       Webster, Merriam Webster Dictionary, at: www.merriam-webster.com