There is an ongoing debate over whether or not a trademark is “property,” and what type of rights a trademark properly secures. Some scholars assert that rules and justifications developed to handle rights in real property are generally a poor fit for intellectual property regimes, and for trademark protection in particular. Others respond that a unified theory of property should be able to account for both real and intellectual property. This article takes the middle course and approaches the issue by mining the analogy between the acquisition of trademark protection and the doctrine of adverse possession.
Courts and scholars have compared the trademark owner’s defensive posture against infringers to the way the owner of real property must ward off adverse possessors. The manner in which a federal trademark registration becomes “incontestable” after five consecutive years of continuous use has also been compared to adverse possession. A closer look reveals that the trademark owner resembles the adverse possessor not merely as she waits for her registration to become incontestable, but at essentially every step in the process of acquiring trademark protection.
Comparing adverse possession to trademark acquisition provides several important insights. First, both doctrinal regimes manifest a purpose to provide notice through productive use to the public and competing claimants. Second, the analogy provides additional evidence that we should recognize property rights in the lexical commons that the public can exercise with regard to words from which trademarks have been acquired. In particular, the rights in the trademark commons are more active and more property-like than rights held in common over expired patents and copyrights. Third, the intersection of these regimes raises questions about whether either regime would benefit from increased clarity, or whether we should prefer their current ambiguity. More precisely, the inherent uncertainty in acquiring trademark distinctiveness and commercial strength is an intentional feature of trademark law, but nevertheless problematic not only for the trademark owner but for competitors and the public. The analogy also provides guidance regarding how to resolve the longstanding good-faith / bad-faith intent conundrum in adverse possession doctrine by rejecting the conundrum: neither good faith nor bad faith possessors are inherently deficient in the notice they provide to owners and the public, and neither should be favored or barred in an adverse possession regime.
Linford, Jake, Trademark Owner as Adverse Possessor (March 6, 2012). FSU College of Law, Public Law Research Paper; FSU College of Law, Law, Business & Economics Paper.