Date: 2016.9.28 (TUE) 18:30-20:30

Place: The 2nd Conference Room, 3rd floor,  International Conference Center, Waseda Unviersity

Lecture Title: Is America running out of Trademarks?

Lecturer: Jeanne C. Fromer, Professor, New York University School of Law / Co-Director, Engelberg Center on Innovation Law & Policy

Commentator: Prof. Tetsuya Imamura, Meiji University

Lecture Overview:

Are there any words left that have not yet been claimed as trademarks in the U.S.? Trademark law has long operated on the assumption that there exists an inexhaustible supply of possible trademarks. With respect to word marks in particular, conventional wisdom has assumed that we will always enjoy a surplus of preexisting words available for exploitation as trademarks, and that in any case, trademark adopters will always be able simply to coin new words, the supply of which is assumed to be effectively infinite. Prof. Fromer and her colleagues present empirical evidence that fundamentally challenges these assumptions.

They use the U.S. Patent and Trademark Office’s recently released Trademark Case Files Dataset, consisting of information on some 7.4 million trademark applications filed at the USPTO between 1870 and 2014, to show the surprisingly high proportion of English words already registered as trademarks in the U.S. and the limited availability of possible coinages not already identical or similar to registered word marks. They also reveal the remarkably high proportion of frequently used surnames that are already claimed as trademarks and explore the implications for trademark law and policy (and for the English language) of trademark congestion and depletion. In addition, they will present some preliminary data on depletion of color marks in the US, which is part of future empirical work on image marks.

While there is no evidence or studies undertaken on a depletion of Japanese words available for registration at the JPO, concerns regarding a depletion of colors etc. were raised in Japan when Japan chose to introduce protection for new forms of marks in 2015. Prof. Imamura will respond to the surprising results from the US, and will draw conclusions and raise questions from a Japanese point of view.