Legal Commentary

Thanks to Dan and Rick and the crew for inviting me to guest blog here.  I write about intellectual property, so I'm particularly excited that this month seems to have more than its share of IP types doing guest stints.

Rick asked me to share some thoughts about a new paper I've recently posted that deals with a hot topic in trademark law these days - the so-called "trademark use" doctrine.  It was a timely request, as I just returned from the University of Richmond School of Law, where I debated my evil twin Stacey Dogan on the question of whether the trademark use doctrine is capable of limiting the scope of trademark protection in predictable ways.   This coming weekend I'll be at the University of Iowa for the Trademark Scholars' Roundtable, where a number of leading trademark scholars will gather to discuss and debate whether the trademark use doctrine exists, what it does, and whether it's a good idea. 

The debate last Friday and the roundtable this weekend grew out of a series of papers on the topic of trademark use, which some scholars have pushed as a mechanism for limiting the scope of trademark rights in at least some contexts.  These scholars (Stacey Dogan and Mark Lemley most prominently) argue that the only use of another's mark that are actionable under the Lanham Act are uses  as a trademark.   What scholars (and courts) mean by "use as a trademark" is sometimes a bit unclear, but Dogan and Lemley seem to use the concept functionally - a trademark use is a use of a mark to indicate the source, sponsorship or affiliation of one's goods or services.  They suggest that, in at least some cases, courts can identify and exclude from liability non-trademark uses, and they can do so early in litigation.  By vigorously applying the doctrine, courts not only shield from liability particular beneficial uses (i.e. keywords), they enhance predictability and prevent feedback (which is a particular problem in trademark law since the scope of rights depends to a large extent on consumer understanding).

Graeme Dinwoodie and Mark Janis (who organized the Iowa conference this weekend) disagreed with Dogan and Lemley, both descriptively (they deny that the Lanham Act limits liability to "trademark uses") and prescriptively (they think the trademark use concept is a bad idea, because it might prevent application of trademark law in some areas where it ought to operate).   Dogan and Lemley's and Dinwoodie and Janis' papers appeared together in the Iowa Law Review, along with a response by Dinwoodie and Janis.

My paper intevenes in the debate and stakes out a middle ground.  I argue that the statute does limit liability to "trademark uses" in a functional sense - only uses that indicate source can be deemed infringing.  This requirement is implicit in the likelihood of confusion standard, I argue, because only uses that indicate source can cause the type of confusion with which trademark law is concerned - confusion about source.  Nevertheless, I argue that trademark use is not a concept that is capable of predictably limiting the scope of trademark rights, because courts can only determine whether a particular challenged use is an actionable trademark use by asking whether consumers are likely to regard the use as source indicative.  This makes trademark use dependent on consumer understanding in much the same way as likelihood of confusion, and the doctrine therefore doesn't advance the ball.    

In my next post I'll explain a little bit more why this dependence on consumer understanding of "source" is such a problem, and how we got to a place where trademark rights verge on absolute.  Then I'll give a report from Iowa, where I hope to convince everyone else that I'm right :)