McKenna on Trademark Use in Commerce

By Eric Goldman

As you know, a big issue in online trademark law is the meaning and import of a “trademark use in commerce” requirement. To win its case, a trademark plaintiff must show that the defendant made a use in commerce of the plaintiff’s trademark. This sounds simple in theory but, due to bad statutory drafting and deep-seated conflicting policy norms, in practice this element has proven baffling to judges. As a result, courts have deeply split on whether keyword triggering or metatag inclusion qualifies as a trademark use in commerce. This has also sparked a robust academic debate; see, e.g., my previous blog post.

Prof. Mark McKenna of St. Louis University (a former guest-blogger here) contributes to this debate with an important insight in his paper “Trademark Use and the Problem of Source in Trademark Law.” I (and others) have lauded the trademark use in commerce doctrine as a way to bypass messy factual inquiries into consumer confusion; but as Mark points out, this apparent attractiveness is false, because to determine if a defendant is making a trademark use in commerce, it’s necessary to assess if consumers would interpret the trademark usage as a designation of the source of defendant’s products. In other words, the trademark use in commerce doctrine still requires a consumer confusion inquiry, negating its elegance as a solution.

Mark is technically right as a descriptive matter, but I’m uncomfortable with the normative implications of his argument. Mark’s paper suggests that (as trademark law is currently constructed) we can never avoid a messy inquiry into consumer confusion in trademark cases, making trademark cases inherently difficult and expensive to resolve. Further, because consumer perceptions are constantly changing and often subgroups of consumers have inconsistent perceptions, Mark’s paper seemingly suggests that trademark law is just anarchy under the hood. I don’t have an immediate solution to this implicit normative crisis, except to suggest that perhaps consumer perceptions about whether defendants are making a source designation are more amenable to expedited judicial determinations than assessments of consumer confusion about the source of marketplace offerings.

Although I’m nervous about its normative implications, the paper is still an excellent contribution to the debate and a must-read for anyone thinking about the trademark use in commerce doctrine.

The abstract:

This paper mediates a scholarly debate regarding the existence and desirability of a trademark use doctrine. It argues that trademark use is a predicate of liability under the Lanham Act, but those who advocate treating trademark use as a threshold question put much more weight on that concept than it can bear. Courts cannot consistently apply trademark use as a distinct element of the plaintiff’s prima facie case because trademark use is not separable from the question of likelihood of confusion. Under modern trademark law, courts can determine whether a defendant has made trademark use of a plaintiff’s mark only by asking whether consumers are likely to view the defendant’s use as one that indicates the source of the defendant’s products or services. Because such an inquiry is, by its nature, highly context-sensitive, trademark use is not a concept capable serving the limiting function advocates hope. The trademark use debate, however, reveals a fundamental problem in modern trademark law and theory. Consumer understanding, and particularly consumer understanding of source, defines virtually all of modern trademark law’s boundaries. But as trademark law’s dramatic expansion aptly demonstrates, these boundaries are never fixed because consumer understanding is inherently unstable, particularly with respect to an ill-defined term like source.