Trademark Search, Artificial Intelligence and the Role of the Private Sector

88 Pages Posted: 6 Feb 2021 Last revised: 20 Apr 2021

See all articles by Sonia Katyal

Sonia Katyal

University of California, Berkeley - School of Law

Aniket Kesari

University of California, Berkeley - D-Lab (Data-Intensive Social Science Lab); Yale Law School

Date Written: January 4, 2021

Abstract

Almost every industry today is confronting the potential role that artificial intelligence and machine learning can play in its future. While there are many, many studies on the role of AI in marketing to the consumer, there is less discussion of the role of AI in creation and selecting a trademark that is both distinctive, recognizable and meaningful to the average consumer. As we argue, given that the role of AI is rapidly increasing in trademark search and similarity areas, lawyers and scholars should be apprised of some of the dramatic implications that its role can produce.

We begin, mainly, by proposing, as a general matter, that AI should be of interest to anyone studying trademarks and the role that they play in economic decision-making. By running a series of empirical experiments regarding search, we show how comparative work can help us to assess the efficacy of various trademark search engines, many of which draw on a variety of machine learning methods. Traditional approaches to trademarks, spearheaded by economic approaches, have focused almost exclusively on consumer-based, demand side considerations regarding search. Yet as we show in this paper, these approaches are incomplete because they fail to take into account the substantial costs that are also faced by not just consumers, but trademark applicants as well.

In the end, as we show, machine learning techniques will have a transformative effect on the application and interpretation of foundational trademark doctrines, producing significant implications for the trademark ecosystem. In an age where artificial intelligence will increasingly govern the process of trademark selection, we argue that the classic division between consumers and trademark owners is perhaps deserving of an updated, supply-side framework. As we argue, a new framework is needed, one that reflects that putative trademark owners, too, are ALSO consumers in the trademark selection ecosystem, and that this insight has transformative potential for encouraging both innovation and efficiency.

Keywords: Trademark Search, Artificial Intelligence, Intellectual Property

Suggested Citation

Katyal, Sonia and Kesari, Aniket, Trademark Search, Artificial Intelligence and the Role of the Private Sector (January 4, 2021). Berkeley Technology Law Journal, Available at SSRN: https://ssrn.com/abstract=3760112

Sonia Katyal (Contact Author)

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

Aniket Kesari

University of California, Berkeley - D-Lab (Data-Intensive Social Science Lab) ( email )

350 Barrows Hall
Berkeley, CA 94704
United States

HOME PAGE: http://https://akesari12.github.io/

Yale Law School ( email )

127 Wall Street
New Haven, CT 06510
United States

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