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Abstract

There is a word that is prevalent today in marketing campaigns, ed-itorials, and our everyday language: iconic. “Iconic” is not only preva-lent as a word in everyday life. Iconic can also have legal significance. As I introduce in this article, the concept of iconic and its use by brands in trademark registrations, oppositions, and litigation has significant and underappreciated consequences under the law. There has yet been no study on the word “iconic” or the legal significance of iconic, de-spite the word’s creeping use in legal filings and claims. My article fills this gap by introducing the concept of iconic as a legal term. It argues that the invocation of “iconic” may inappropriately expand trademark’s origin of the goods to expressive messages that are usually in the prov-ince of copyright. Brands describe designs copied from their history or other communities’ traditions as “iconic” when they seek or enforce their trademark rights. Brands also lean on consumers and the media’s christening of their designs as “iconic.” Hermès’ Birkin, for example, is iconic in part for the design’s connections to Jane Birkin and the idea-tion of the design’s creation. Trademark validity is about the origin of goods, including messages about sponsorship and affiliation. Trade-mark infringement is about consumer confusion. The Supreme Court told us that trademark law is about the origin of goods. The origin of goods cannot indicate the originator of the content that goods embody — such an indication should belong to copyright. The concept and use of iconic in trademark law challenges this boundary between trademark law and copyright law. In the concept of iconic as a legal term, there can be little difference between goods and ideas. I argue that when evaluating trademark rights, we should be skeptical about how the word “iconic” is used. This skepticism should mean a legal concept of iconic that signals a smaller scope of trademark rights for iconic designs like the Hermès Birkin if it means any trademark rights at all.

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