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Wednesday, April 16, 2008

The Iowa Caucuses

As I mentioned in my last post, I spent last weekend at the University of Iowa with 15 or so of the country's leading trademark law scholars.  We were discussing the topic of trademark use, which I tried to frame earlier.  Rebecca Tushnet and Eric Goldman posted comments about the Roundtable, here, here, here, here, and here.

The reason the trademark use debate has cropped up is that trademark rights are supposed to be limited, such that many possible uses of another's mark are permitted.  But it's often hard to know, ex ante, whether the use you contemplate is one of those that is allowed.  The infringement analysis in trademark law depends on application of a multi-factor likelihood of confusion test which, like all multi-factor tests, is exceedingly pliable.  Inability to predict with confidence that one's use will be legitimate (and the cost of finding out) is a problem because it tends to chill a number of uses that might actually be allowed.  The absence in the marketplace of these chilled uses then shapes consumer expectations of what is allowed, which ultimately determines what actually is allowed. 

My sense at the Roundtable was that there was widespread agreement that this dynamic was a problem.  Disagreement related to the source of the problem and the proper approach to fixing it.  Some advocate applying a trademark use doctrine as a gatekeeping mechanism designed to brighten the line between actionable and non-actionable uses and to allow courts to dispose of cases early.  My problem with the trademark use doctrine is that it is not, in my view, capable of brightening the line.  In order for it to work as a gatekeeper, we would need principles by which we could readily determine whether a particular use was a trademark use or not.  I don't believe we have those principles, which means courts have to resort to guesses about what consumers will understand a use to mean. 

This does not mean we should not be concerned about how to delineate more clearly the scope of trademark protection.  I've suggested in a recent paper that one way of doing that is to divorce a number of defenses in trademark law from the likelihood of confusion analysis - so that comparative advertising would not be actionable even if it did cause some confusion.  These are partial answers, but they don't ultimately go to the heart of the problem, as I see it. 

The real problem in modern trademark law is that everything depends on consumer understanding of "source."  Mark owners have claims against anyone who uses a mark to indicate the source of her products.  But source doesn't mean only the actual party that made the goods at issue; it also includes parties who might be thought to have sponsored the goods or their producer or who are affiliated with the producer.  What types of relationships does this include?  That's precisely the problem. 

Once you get away from a determination about who is the actual, historical source of a product or service, it's very difficult to draw lines between relationships that matter and those that don't.  Consumers often don't understand and/or don't care about the relationships between commercial actors.  More problematically, it seems pretty clear that consumers frequently draw conclusions about whether a mark owner has sponsored or is affiliated with another user by guessing whether the law allows the particular use.  If they don't think the law allows it, the mark owner must have permitted it.  And believing the mark owner permitted it probably counts as being confused about sponsorship or affiliation.

So I think the trademark use debate is really a window into a more fundamental problem:  we don't have good tools in trademark law for defining the sorts of relationships about which we should be concerned about consumers being confused.  Once upon a time this was an easy issue.  Because trademark law targeted competitors who were trying to divert a mark owner's trade, only confusion that could result in diversion of a current customer could be actionable.  But trademark law has expanded far beyond this trade diversion model, and it's now flailing about for limiting principles.       

Posted by Mark McKenna on April 16, 2008 at 05:16 PM in Intellectual Property | Permalink

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