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75 Stan. L. Rev. 1 (2023)

handle is hein.journals/stflr75 and id is 1 raw text is: ARTICLE Trademark Spaces and Trademark Law's Secret Step Zero Mark A. Lemley & Mark P. McKenna' Abstract. When is a design just a design, and when is it a trademark? Over the last several decades, courts have developed a clear framework for evaluating the distinctiveness of certain unconventional marks, especially those typically conceived of as trade dress. The Supreme Court has drawn a line between product packaging, on the one hand, and product design, on the other. Packaging features are treated just like any other potential trademark in the sense that we protect them automatically if they are inherently distinctive, and we require evidence of secondary meaning if they aren't. Product design is different. Like color, it is incapable of being inherently distinctive and can be protected only when it has acquired secondary meaning. There's just one problem with this fundamental rule: It isn't true. Or at least, it isn't the whole truth. As we show in this Article, sometimes courts and the Trademark Office don't recognize features like logos as being part of a product's design, and as a result, they ignore the categorization system and evaluate the claimed features for inherent distinctiveness. Something similar happens with certain product packaging features, except in reverse. In other words, courts are engaged in a previously unrecognized step zero before they classify trade dress features and apply the normal rules of distinctiveness for product packaging and product configuration. In that largely implicit step, courts and trademark examiners make their own judgments about the role of that feature, and particularly whether they believe consumers are likely to regard those features as trademarks. While courts and the Trademark Office have been slow to articulate rules for step zero- or even to acknowledge that it exists-we show in this article that in practice they are *© 2023 Mark A. Lemley, Mark P. McKenna, and the Stanford Law Review. Mark A. Lemley is the William H. Neukom Professor, Stanford Law School and a partner at Durie Tangri LLP. Mark P. McKenna is a Professor of Law, UCLA School of Law, the Faculty Co- Director of the UCLA Institute for Technology, Law & Policy, and Of Counsel at Lex Lumina PLLC. Thanks to Barton Beebe, Sarah Burstein, Eric DeRosia, Graeme Dinwoodie, Stacey Dogan, Jeanne Fromer, Deborah Gerhardt, Rose Hagan, Laura Heymann, Glynn Lunney, Bill McGeveran, Lisa Ramsey, Alexandra Roberts, Jennifer Rothman, Jeremy Sheff, Jessica Silbey, Chris Sprigman, Rebecca Tushnet, and participants at the IP Scholars' Conference, the Trademark Scholars Roundtable, and the International Trademark Association's 2022 Scholarship Symposium for comments on early versions of this project, and to Jennifer Friedmann for research assistance. 1

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