Using linguistic analysis to go below the surface in trademark disputes

Abstract

The notions of same or different are ubiquitous in trademark disputes. At issue is the likelihood of confusion between marks in the mind of the “average consumer.” The test for confusion rests on establishing their degree of resemblance in terms of “sound, appearance and ideas suggested.” Evidence adduced by forensic linguists typically centers on whether the marks contain the same word, share the same sounds, letters, and dictionary meaning, or share the same number of phones, phonemes, or syllables. But since the features appealed to are typically surface-level, and thus ostensibly also available to the layperson, the judge may decide that expert assistance is superfluous. I argue that reliance on such features to the exclusion of underlying linguistic structure may lead to misleading results. Drawing on various linguistic processes, I present several Canadian trademark cases in which I served as expert witness to demonstrate that different words (or collocations thereof) may in fact be instantiations of the same structure, while superficially like ones may be involved in entirely different constructions. The results of these analyses make a strong case for going beneath the surface in determining questions of same or different.