Academic Debate over Trademark Use in Commerce

By Eric Goldman

As regular blog readers know, a hot area in online trademark law is the “trademark use in commerce” element of the plaintiff’s prima facie case. This element has been dispositive in several noteworthy defense wins, including the 1-800 Contacts v. WhenU and Rescuecom v. Google cases. Yet, some experts, such as Prof. McCarthy, believe that the prima facie case doesn’t require the plaintiff to show that the defendant made a trademark use in commerce.

This debate has led to 2 companion articles by 4 top trademark scholars. First, Graeme Dinwoodie and Mark Janis wrote Confusion Over Use: Contextualism in Trademark Law. In the article, Dinwoodie/Janis agree with McCarthy that trademark use in commerce isn’t a separate element of the plaintiff’s prima facie case because, otherwise, the trademark fair use statutory provision makes no sense. Therefore, Dinwoodie/Janis favor a contextual analysis of infringement which effectively omits the trademark use in commerce element and instead focuses on the likelihood of confusion factor.

Mark Lemley and Stacey Dogan responded with Grounding Trademark Law Through Trademark Use. This article argues that the trademark use in commerce element historically helped distinguish between direct and contributory infringers (i.e., if the defendant hadn’t made a TM use in commerce, its only liability would be contributory).

As I’ve said before, I think the statute is unresolvably irresolute, so statutory arguments aren’t likely to help us reach a consensus any time soon. From a normative standpoint, I think Lemley and Dogan have the better argument in this debate, but for different reasons than the ones they articulate. I think the use in commerce requirement acts to keep “commercial referential uses” outside the boundaries of trademark law. I’ll explain this in more detail soon.

The Dinwoodie/Janis abstract:

This paper tackles an intellectual property theory that many scholars regard as fundamental to future policy debates over the scope of trademark protection: the trademark use theory. We argue that trademark use theory is flawed and should be rejected. The adoption of trademark use theory has immediate practical implications for disputes about the use of trademarks in online advertising, merchandising, and product design, and has long-term consequences for other trademark generally. We critique the theory both descriptively and prescriptively. We argue that trademark use theory over-extends the search costs rationale for the trademark system, and that it unhelpfully elevates formalism over contextual analysis in trademark law rulemaking. The theory seeks determinate trademark rules in order to encourage a climate of certainty for innovators, but the concepts on which it is founded are likely to degenerate. We show that trademark use theorists ignores the multivalence of trademark law, and that adopting trademark use doctrines would result in less transparent trademark decisionmaking. Instead, we propose that trademark law retain its traditional preference for contextual analysis. We show in particular how a contextual analysis would offer an approach to trademark disputes involving online advertising that better captures the potential of trademark law to police new information markets. Our analysis contemplates individualized assessments according to common law standards, but opens up policy space for the development of limited statutory safe harbors for intermediaries such as search engines.

The Lemley/Dogan abstract:

The debate over trademark use has become a hot-button issue in intellectual property (IP) law. In Confusion over Use: Contextualism in Trademark Law, Graeme Dinwoodie and Mark Janis characterize it as a dispute over whether to limit trademark holder rights in a new and unanticipated way. Yet there is another – in our view more historically accurate – way to frame the trademark use debate: the question is whether courts should, absent specific statutory authorization, allow trademark holders to assert a new and unprecedented form of trademark infringement claim. The pop-up and keyword cases involve attempts to impose third-party liability under the guise of direct infringement suits. Dinwoodie and Janis’s thorough account notwithstanding, it remains the fact that, before the recent spate of Internet-related cases, no court had ever recognized a trademark claim of the sort that trademark holders are now asserting. Trademark infringement suits have always involved allegations of infringement by parties who use marks in connection with the promotion of their own goods and services. The question raised by the trademark use cases, as we view it, is whether courts should countenance a radical departure from that traditional model without specific instruction from Congress. We think they should not.

In this paper, we explain the origins of trademark use doctrine in traditional limits on the scope of the trademark right and in the distinction between direct and contributory infringement. We also explain why we cannot simply rely on the likelihood of consumer confusion test to solve the problems the trademark use doctrine addresses, and we examine the difficult problem of defining the scope of the trademark use doctrine.