Here’s a question for our design-minded readers: If survey evidence told you that consumers recalled only certain elements of a beloved logo, would you remove the rest, and reduce it to only the most commonly remembered features?
Most likely, your answer doesn’t involve analysis under trademark law.
So, maybe, this post will influence how you think about the answer to that question.
One of the often-ignored principles of trademark law is that the determination of similarity between marks is not made through “side-by-side” comparison.
Rather, marks are evaluated based on all relevant facts pertaining to appearance, sound, and connotation, with the emphasis on the “recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks.”
The predecessor court to the Court of Appeals for the Federal Circuit stated it more bluntly in 1969: Consumers “may have but dim recollections.”
Despite this long-standing expression of the law, trademark attorneys for both plaintiffs and defendants still can’t help themselves from making “side-by-side” comparisons, routinely leading with them in pleadings or letters, often setting the marks side-by-side in a table, or one-after-the-other in paragraphs. Here’s an example snipped straight from the pleadings in a previously blogged about case involving a beaver in a ball cap and an alligator in a cowboy hat:
Of course, it’s fair that a plaintiff or defendant would like to point out exactly, side-by-side, the common elements or differences in the marks.
I wondered, how often courts strictly enforce a side-by-side comparison from making its way to a jury, since once the side-by-side comparison is shown, it is sort of hard to unsee, and couldn’t that potentially mislead a jury by giving them a false experience with the marks?
In the Buc-ee’s case, it appears no attempt was made to shield the jury from such exposure, as a slide deck was purportedly used as a demonstrative to the jury during opening and closing statements, it is literally only side-by-side comparisons:
In the wild, with few exceptions, this is not how consumers interact with brands. Instead, in between the interactions with the alleged rightful brand owner in the first instance and the alleged brand infringer some time after, there is the memory of the consumer, dim as it may be.
Thus, there is infringement when a plaintiff can show that upon seeing the defendant’s junior mark, factoring in the consumer’s fuzzy recollection of the plaintiff’s senior mark, the similarities of the defendant’s mark are such that consumers are likely to be confused, mistakenly believing they are encountering products or services of the plaintiff.
In such situations, the law views the defendant’s enjoyment of the goodwill earned by the plaintiff under its mark as a harm to the plaintiff.
So it seems that if what consumers recollect ultimately drives the infringement analysis, it is important then to understand: Just what do consumers remember about trademarks?
Recently, Van Monster, “the UK’s largest choice of quality used vans” published the results of Motors by Memory, an informal, non-academic, study of British consumers’ recollection of car logos. The study asked 100 British consumers to draw 10 car logos, purely from memory.
The results are presented along an approximate spectrum of accuracy, and as you might expect range from impressively accurate to incredibly terrible.
Take a look at the results for BMW, below:
As analyzed by Van Monster, in the BMW example, 92% were able to recall the colors white and blue, and 59% drew a quadrant.
However, despite more than 90% drawing a circle of some kind, by my own calculation, only about 20% specifically recalled the black outer circle.
Recently, BMW updated its logo to remove the black outer circle. Although BMW’s decision was met with mixed reviews, perhaps similar survey results contributed to the controversial redesign?
Below is a side-by-side comparison, old versus new:
Take a look back at consumer recollections of the old BMW logo. Doesn’t it seem that the new logo falls right in the middle of the chart, perhaps representing some sort of mean or median of “consumer recollection?”
Whether or not BWM actually took this approach, I have no idea – but, designers, what would you say about taking this approach to design?
And trademark attorneys, would the new BMW logo, backed potentially by survey evidence about how strongly the elements are recalled, make it that much easier to support enforcement against similar marks using those same elements, without resorting to any side-by-side comparison?