Sonia K. Katyal - UCLA Law Review

1616 57 UCLA LAW REVIEW 1601 (2010)
U.S. Supreme Court case of Friedman v. Rogers, 48 which involved a state statute
that barred optometrists from practicing under a trade name, the Court found
that trade names carried little or no informational content:
Here, we are concerned with a form of commercial speech that has no
intrinsic meaning. A trade name conveys no information about the price
and nature of the services offered by the optometrist until it acquires
meaning over a period of time by associations formed in the minds of the
public between the name and some standard of price or quality. 49
Following this view, scholars interpreted Friedman to suggest that
trademarks have little expressive or informational value because they do
not convey information intrinsically; it is only through secondary meaning
that information becomes circulated, through “associations that grow up over
time between the name and a certain level of price and quality of service.” 50
The Friedman view initially facilitated a very limited scope of trademark
protection, whereby courts initially saw a trademark as “little more than a vehicle
through which consumers could match products with their producers.” 51
The
central justification for trademark law, under this view, is that it is a property
right that functions, essentially, just like any other kind of private property in this
context. Trademark protection thus protects the mark’s source-identifying
function by ensuring that one party—the mark’s source—enjoys exclusive rights
in a single context. Without such protection, the law reasons, both consumers
and producers suffer. Consumers would face higher search costs in locating
authentic goods, endangering the qualitative associations the consumer makes
with a certain good, and ultimately making it less and less desirable for companies
to engage in trademarking behavior. 52
But there is a complexity that brands like AUNT JEMIMA plainly
demonstrate. It is true that trademark law protects a brand’s proprietary, sourceidentifying
function. 53
But trademarks do more than lower consumer search
48. 440 U.S. 1 (1979).
49. Id. at 12.
50. Id. at 16. For discussion of this point, see Jeffrey Lefstin, Note, Does the First Amendment Bar
Cancellation of REDSKINS?, 52 STAN. L. REV. 665, 674–75 (2000).
51. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV.
1839, 1843 (2007) (arguing that early trademark law was largely concerned with unfair competition, and
was strongly influenced by natural rights theories of property); Dreyfuss, supra note 30 (reaching similar
conclusions about trademark’s narrow functions).
52. Trademark law protects against unauthorized proprietary uses in commerce, on the ground that
classic forms of passing off (1) increase the costs of finding authentic goods in the marketplace; (2)
misrepresent the quality and characteristics of the good; (3) fail to satisfy a customer who desires to
purchase an authentic good; and (4) diminish the incentives to engage in further trademarking activity.
See Barnes, supra note 34, at 23.
53. See id. at 28.