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EDITOR’S NOTE
The Trademark Reporter is pleased to publish in this issue one
of the articles that won the Ladas Memorial Award. Michael A.
Johnson, a recent graduate of Vanderbilt University Law School,
was the winner of the 2010-2011 Student Award. His article
follows this page.
Anthony Fletcher, a senior principal at Fish & Richardson,
New York, NY, was the winner of the 2010-2011 Professional
Award. His article, “The Product with the Parody Trademark:
What’s Wrong with CHEWY VUITON?” was published at 100
TMR 1091 (2010).
The writing competition was established in tribute to the
distinguished practitioner and author Stephen P. Ladas. The
Ladas Memorial Award is given to the best paper on the subject of
trademark law or a matter that directly relates to or affects
trademarks.
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THE WANING CONSUMER PROTECTION
RATIONALE OF TRADEMARK LAW:
OVERPROTECTIVE COURTS AND THE
PATH TO STIFLING POST-SALE CONSUMER USE
By Michael A. Johnson∗
I. INTRODUCTION
In what has become a rather notorious example, in 2006 the
Emerson Electric Company filed suit against NBC Universal
Television Studios (NBC), alleging, among other things, infringement
of its trademark IN SINK ERATOR for garbage disposals.1 Emerson
claimed that NBC, without the consent of Emerson, used the IN
SINK ERATOR trademark in the pilot episode of a television show
called Heroes. In particular, Emerson took issue with a scene in
which a young woman put her hand in a garbage disposal bearing the
IN SINK ERATOR trademark, causing injury.2 NBC did not believe
the suit had merit, but still settled the case and pixilated the
trademark in subsequent airings and in the DVD version.3 Curt King,
spokesman for NBC, stated, “While we do not believe there is any
legal issue with the episode as originally broadcast, we nonetheless
have decided to edit the episode for future uses . . . .”4
Trademark users such as NBC have received cease and desist
letters even in cases where there is no possible way to
communicate an idea except through the trademark itself.5 For
instance, a company sent a cease and desist letter to one of its own
authorized re-sellers warning the re-seller to change its website
name because the mark owner thought the site name was too
confusing.6 This was the case even though the authorized re-seller
∗ J.D., Vanderbilt University Law School. Associate at Kay, Griffin, Enkema &
Colbert, PLLC in Nashville, Tennessee. I would like to thank Professor Daniel J. Gervais for
his invaluable guidance and insight in forming a topic and throughout the writing and
editing process, as well as my colleagues Gene Endress, Jared Gardner, Dan
Hyndman, and Theresa Weisenberger.
1. Emerson Elec. Co. v. NBC Universal Television Studios Inc., 06-cv-01454 (E.D. Mo.
Oct. 2, 2006).
2. Id.
3. Matthew Belloni, Hand Mangling on NBC’s ‘Heroes’ Leads to Trademark Claim,
Allbusiness, Oct. 5, 2006, http://www.allbusiness.com/services/legal-services/44660121.html.
4. Id.
5. The fact that there is no alternative means of communication could raise First
Amendment concerns. See infra notes 154-57 and accompanying text.
6. See Letter from Guntersville Breathables to Kentucky Hot Brown (July 23, 2004),
available at http://www.chillingeffects.org/domain/notice.cgi?NoticeID=1368.
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1321
had validly purchased the goods and the site clearly sold used
goods.7
Chilling Effects Clearinghouse, a joint project of various law
schools, is a website dedicated to cataloging cease and desist
letters like the one Emerson sent to NBC. As of the date of this
writing, Chilling Effects Clearinghouse has collected more than
36,568 letters related to intellectual property law and the First
Amendment.8 Most of these letters chill post-sale use of
trademarks whether or not the sender’s legal claims have merit
because their aim is to silence users or prevent use of a
trademarked good the consumer owns, thus seriously curtailing
the user’s property rights.9 Unfortunately, the confused state of
modern trademark law tends to prolong litigation when the matter
ends up in court, thus increasing both costs and risks, and
encouraging the recipients of these letters to simply comply with
the request rather than fight for the right to speak using
trademarked goods, terms, or symbols.10
Even NBC did not try to vindicate its interest in post-sale use.
It is not that courts do not care about consumer protection or free
speech. On the contrary, some might say that courts have been too
aggressive in their consumer protection efforts, which is creating a
backlash against consumer interests.11 NBC purchased the IN
SINK ERATOR garbage disposal just as any other consumer
would. Then, Emerson sought to control the way in which NBC
used the trademarked good. There is no dearth of similar cases—
exemplified by the wealth of cease and desist letters—which are
fundamentally changing consumer expectations, slowly but
steadily generating a chilling belief that any post-sale use of a
trademark (especially a public use) must be authorized by the
trademark owner. This belief has, in turn, prompted a number of
courts to conclude that a consumer would actually be confused by
NBC’s use of IN SINK ERATOR: many consumers would think
that the use needed to be approved and therefore might think the
use actually was approved or sponsored in some way by the
makers of IN SINK ERATOR garbage disposals. This is a truly
disturbing development that has powerful implications for
consumer protection efforts in modern trademark doctrine, and
beyond that, for free speech and the scope of ownership rights in
goods bearing trademarks—that is, basically any and all goods
sold today. As cases like the above change consumer expectations,
7. Id.
8. Chilling Effects Clearinghouse, Index of Notices, http://www.chillingeffects.org/
notice.cgi (last visited July 21, 2011).
9. Id.
10. See generally William McGeveran, Rethinking Trademark Fair Use, 94 Iowa L. Rev.
49 (2008).
11. See infra Part III.B.
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confusion and other trademark doctrines expand and have begun
to drastically impede consumer interests, specifically the ability to
use a trademarked good post-sale.12
The traditional justification for trademark law is the
protection of both consumers and trademark owners.13 The Senate
Committee on Patents described trademark law as both
“protecting the public so that it may be confident that, in
purchasing a product . . . it will get the product which it asks for
and wants to get,” and protecting a trademark owner’s expenditure
of “energy, time, and money in presenting to the public the product
. . . from . . . misappropriation by pirates and cheats.”14 Despite
this putative two-fold aim of trademark law, consumers are often
relegated to the sidelines in trademark litigation. The typical
parties to a trademark dispute are the trademark owner and an
alleged infringer, both of which lack incentive to raise or protect
consumer interests because this would only reduce that party’s
control over the litigation.
Commentators have criticized a variety of modern doctrinal
innovations on the ground they are not motivated by concerns for
consumer protection.15 Dilution and confusion are the two most
commonly targeted examples.16 “These critics almost universally
characterize modern doctrines as indicative of a shift in trademark
law away from confusion-based protection and towards a propertybased regime that is focused only superficially on consumers.”17
Mark McKenna has argued that such property-focused doctrine is
nothing new, and is in fact the foundation of trademark law.18
12. See infra Part III.A.
13. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame
L. Rev. 1839, 1857 (2007), reprinted in 97 TMR 1126 (2007); Stacey L. Dogan & Mark A.
Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 Emory L.J. 461,
466-69 (2005) (explaining that the purpose of trademark law is to facilitate the flow of
truthful information and reduce consumer search costs, thereby encouraging producers to
make quality goods); see generally 1 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 2:1 (4th ed. 2007).
14. S. Rep. No. 79-1333, at 3 (1946).
15. See, e.g., McKenna, supra note 13.
16. See, e.g., Wendy J. Gordon, Introduction, Ralph Sharp Brown, Intellectual Property,
and the Public Interest, 108 Yale L.J. 1611, 1614 n.19, 1615 (1999) (calling dilution a
“disaster”); Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 Stan. L. Rev. 413,
414-15 (2010) (arguing that trademark law should focus its attention on confusion that is
actually relevant to consumer purchasing decisions).
17. McKenna, supra note 13, at 1846-47.
18. See generally id. at 1848 (“American trademark law was unapologetically produceroriented. Trademark law, indeed all of unfair competition law, was designed to promote
commercial morality and protect producers from illegitimate attempts to divert their trade.
Consumer confusion was relevant to the traditional determination of infringement not for
its own sake, but because deceiving consumers was a particularly effective way of stealing a
competitor’s trade. . . . Trademark law primarily sought to regulate the relationship
between competitors; any benefits to consumers were secondary.”).
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Accordingly, McKenna asserts, “critics delude themselves when
they seek to limit trademark law by tying protection to consumer
expectations.”19 However, the fact remains that, contrary to what
other commentators have claimed, both courts and Congress have
shown a steadily increasing interest in consumer protection,
expanding various branches of the confusion doctrine to encompass
certain consumer uses.20
If the courts and legislatures have exhibited such a strong
move toward consumer protection, why, as various commentators
have observed,21 does trademark law seem to be drifting away from
consumer protection? The answer—though not the blame—lies in
consumers themselves. Consumer expectations shape trademark
law.22 Nowhere is this truer than in the area of confusion. Under
the confusion doctrine, a court must decide whether a reasonable
consumer would be confused about the origin of the particular good
bearing the trademark.23 This “reasonable consumer” standard
naturally changes as consumer expectations shift in response to
market forces. The result is a somewhat circular model where
consumer expectations change the law and the law, ideally,
changes consumer expectations.24 The danger is that this feedback
loop will inform the definitions of likelihood of confusion in ways
that, although perhaps consistent with current consumer
expectations, may actually be inconsistent with broader, normative
consumer interests as courts patronize consumers, protecting them
from fringe forms of confusion.
This drift away from consumer protection is not because courts
have failed to consider consumer interests, as others have
argued.25 On the contrary, for many years courts have actually
overprotected consumers from confusion through fringe doctrines
such as post-sale confusion.26 My suggestion is that this
overprotection—together with mark owners’ responses to it
through cease and desist letters and litigation—has fundamentally
19. Id.
20. See infra notes 46-48, 100-11 and accompanying text.
21. See, e.g., McKenna, supra note 13.
22. See infra Part II.
23. See generally 5-5 Gilson on Trademarks § 5.02 (2010); see also Abercrombie & Fitch
Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 646 (6th Cir. 2002) (holding that
“evidence of actual [consumer] confusion” is one of eight factors to be weighed when
determining likelihood of confusion); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49
(9th Cir. 1979) (same); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.
1973) (same); Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)
(same).
24. See infra Part III.B.
25. See, e.g., McKenna, supra note 13 (arguing that modern trademark law is produceroriented, and rightly so because this is the foundation of trademark law).
26. See infra Part III.A; see generally Lemley & McKenna, supra note 16 (arguing that
courts have expanded the concept of confusion too far).
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changed consumer expectations, and has, in turn, reduced
consumers’ ability to use trademarked goods and symbols by
increasing the likelihood that consumers will expect that the use of
any trademarked good in any commercial context is based on
sponsorship or affiliation with the trademark owner. The
exponential development of product placement in motion pictures
and television programs is liable to increase this perception.27 This
is arguably just what mark owners want; as this consumer
expectation spreads, courts and Congress begin to legitimize this
belief and expand protection for famous marks in accordance with
the “reasonable consumer” of the confusion test.28 Such
overprotection is as dangerous as not protecting trademarks at all
because “[o]verprotection stifles the very creative forces it’s
supposed to nurture.”29 Shifting consumer expectations may thus
result in the perilous overprotection of trademark owners. Though
initially guided by the normative light of consumer protection, the
cases that broaden likelihood of confusion—such as those that
encompass relative utility30—are shifting the outcomes of litigation
away from consumer protection by curtailing post-sale use. This
article thus seeks to answer to an often-debated question: should
trademark law merely reflect social norms, or should it seek to
create them?
Courts can still remedy this shift away from consumer
protection by shaping consumer expectations in a way that is
actually beneficial to consumer interests. However, because actual
consumer expectations are difficult to divine from often biased
party-gathered surveys,31 courts need assistance in balancing
these considerations. The parties to trademark litigation are of
little help in this regard. They typically advocate for consumer
interests only to the extent that it is beneficial to their own
position, and their definition of consumer interests may be more
rhetorical volleys than empirically demonstrable assertions.
Therefore, I propose the addition of a third party to trademark
litigation—a guardian ad litem of sorts—who would conduct
surveys, advocate for consumers more generally, and advise the
court of relevant consumer interests and how to shape consumer
expectations in a way that will protect those interests.
27. See infra Part III.B.
28. See infra Part III; see also Alexandra J. Roberts, New-School Trademark Dilution:
Famous Among the Juvenile Consuming Public, 49 IDEA 579, 579 (2009), reprinted in 100
TMR 1021 (2010) (discussing the Trademark Dilution Revision Act of 2006, 15 U.S.C. §
1125(c), which increases protection of famous marks, and thus “strengthens incentives for
mark-owners to ensure their logos and brand names are well-recognized”).
29. Keith Aoki, How The World Dreams Itself to be American: Reflections on the
Relationship Between the Expanding Scope of Trademark Protection and Free Speech
Norms, 17 Loy. L.A. Ent. L. Rev. 523, 532 (1997).
30. See infra Part III.A.
31. See infra Part IV.
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This article will proceed in five parts. In Part II, I will discuss
the consumer interests and investments in trademarks. Part II
will focus in particular on social signaling and the role it has
played and continues to play in broadening consumer expectations
about post-sale trademark use. Part III will demonstrate how
trademark doctrine has drifted from consumer protection
considerations, and will attempt to elucidate the cause of this shift.
In Part IV, I propose the addition of a third party to trademark
litigation to help courts ascertain current consumer expectations
and effectively balance those expectations against broader,
normative consumer interests. Part V will present concluding
remarks.
II. CONSUMER INTERESTS AND INVESTMENT
IN TRADEMARKS
Consumers have social, emotional, and financial interests and
investments in trademarks. As an initial matter, it is essential to
keep in mind the difference between consumer interests and
consumer expectations. Consumer interests are an essential
normative consideration in trademark law. This holds true
regardless of what consumers expect. However, consumer
expectations are what courts look to as a test to determine whether
a particular use of a mark is confusing.32 Consumer expectations
change in response to market forces, social norms, and a host of
other factors. My contention is that if courts are not careful in how
they consider such shifts in expectations, these changes will not be
consistent with consumer interests. Therefore, as courts seek to
protect consumers—one of the primary goals of trademark law—
they must find a balance between guarding consumer interests
and bowing to shifting consumer expectations.
A. Social Investment
Many consumers value a particular trademark because of
what owning or displaying that mark may communicate to the
general public in the post-sale environment. In this way,
trademarks function as part of the construction of our public
personas, even our sense of “self.”33 It is generally accepted that
“[a]dvertising is a way for companies to communicate with
individuals, but logos are a way for people to communicate with
each other.”34 This signaling function is the “relative utility” of the
32. See, e.g., Polaroid, 287 F.2d at 495 (holding that “evidence of actual [consumer]
confusion” is one of eight factors to be weighed when determining likelihood of confusion).
33. See infra Part II.B.
34. Daniel E. Newman, Portraying a Branded World, 2008 U. Ill. J. L. Tech. & Pol’y
357, 364 (2008).
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trademark. The “absolute utility” is the functional characteristics
of the good bearing the trademark. For example, according to a
2007 survey, 57 percent of TOYOTA PRIUS automobile owners
indicated that their primary motivation for buying the PRIUS was
relative utility, stating that it “makes a statement about me,”
while only 36 percent said their primary motivation was absolute
utility (that is, “higher fuel economy”).35
Thorstein Veblen called such purchases made for the purpose
of relative utility “conspicuous consumption.”36 These so-called
Veblen goods “include[] almost any form of purchase where a
person pays extra because other people connote high-status or
wealth with the product.”37 As Veblen stated, “Since the
consumption of these more excellent goods is an evidence of
wealth, it becomes honorific; and conversely, the failure to
consume in due quantity and quality becomes a mark of inferiority
and demerit.”38 A common product can be a Veblen good as long as
it communicates information about the consumer’s status or
wealth.39 A Veblen good can also hold relative utility as a result of
its rarity. These goods fall into the “snob effect” category, which
describes the relative utility one derives from a product as a result
of that product’s ability to display exclusive or expensive tastes.40
“The snob effect value of a product is almost inversely related to its
popularity, and can be divorced from price as long as quantities
are limited.”41
At first blush, it does not seem consumer protection is served
at all by the protection of relative utility. When a court vindicates
a trademark owner’s right to enforce relative utility and thus
preserves the sumptuary order, the court is not preventing
consumer confusion about the trademark itself, but rather is
preventing the confusion of a nonpurchaser about the status of the
person who purchased the trademarked good. However, such
confusion may eventually or tangentially affect the purchasing
decision of a consumer who desires the relative utility such a
trademark may provide, and therefore consumer interests are
certainly served by the protection of relative utility.
35. Micheline Maynard, Say “Hybrid” and Many People Will Hear “Prius”, N.Y. Times,
July 4, 2007, at A-1.
36. Thorstein Veblen, The Theory of the Leisure Class: An Economic Study of
Institutions 74 (MacMillan Co. 1912) (1899).
37. Newman, supra note 34, at 362.
38. Veblen, supra note 36, at 74.
39. Newman, supra note 34, at 362.
40. H. Liebenstein, Bandwagon, Snob, and Veblen Effects in the Theory of Consumers’
Demand, 64 Q. J. Econ. 183, 189 (1950) (analyzing the demand curves for Veblen and snob
goods).
41. Newman, supra note 34, at 362.
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Protection of relative utility is essential to the protection of
consumer interests because
in our consumer culture people do not define themselves
according to sociological constructs. They do so in terms of the
activities, objects, and relationships that give their lives
meaning. It is the objects, and consumer goods above all, that
substantiate their place in the social world. It is through
objects that they relate to others.42
Some trademarks that once indicated only source or quality are
now indicators of the “status, preferences, and aspirations of those
who use them. Some trademarks have worked their way into the
English language; others provide bases for vibrant, evocative
metaphors.”43 In many cases, there is no replacement for the
metaphoric power of a trademark. Consider, for example, the
phrases, “it’s the Rolls Royce of its class” or the “it is the Cadillac
of minivans”;44 these ideas are difficult to express effectively any
other way.45
Moreover, modern trademark law certainly protects relative
utility and helps prevent post-sale, non-consumer confusion. The
original version of Section 32(1) of the Lanham Act covered only
instances in which an infringing use would cause confusion among
“‘purchasers as to the source of origin of . . . goods or services.’”46 In
1962, Congress amended Section 32(1) and removed the limitation
of the Act’s application to purchasers only.47 On the other hand,
one could argue that courts are preventing consumer confusion
indirectly through the prevention of such non-consumer confusion
because when unauthorized copies—or other similar confusing
uses—of a Veblen good become prevalent, it decreases the
signaling function and “snob effect” of the trademark, in which
both the trademark owner and consumers have invested to create
this relative utility. Then, in 1996, Congress amended the
Trademark Act of 1946 through the Federal Trademark Dilution
Act, which expressly eliminated the need to show that the use of a
mark had resulted in confusion or that there was competition
between two marks, shifting the focus away from consumers and
42. John Schouten & James H. McAlexander, Subcultures of Consumption: An
Ethnography of the New Bikers, 22 J. Consumer Res. 43, 59 (1995).
43. Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 965 (1993).
44. This is a quote from the 1995 film Get Shorty (Metro-Goldwyn-Mayer).
45. Id. at 973.
46. David M. Tichane, The Maturing Trademark Doctrine of Post-Sales Confusion, 85
TMR 399, 401 (1995) (emphasis added).
47. U.S. Trademark (Lanham) Act, Pub. L. No. 87-772, § 17, 76 Stat. 769, 773-74 (1962)
(codified as amended at 15 U.S.C. § 1114 (2006)).
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onto the mark itself.48 This protection of the distinctive quality of
the mark itself is another example of protection of the signaling
function of famous marks, which is arguably desired by consumers.
Because relative utility is important to consumers and mark
owners alike, it is reasonable for courts to protect it as a consumer
interest in accordance with the purposes of trademark law. Jeffrey
Harrison argues that trademark law’s protection of relative utility
is a morally and socially impermissible form of government
subsidization of status signaling. Harrison asserts that the reason
for this shift from protecting the consumer from confusion and
decreasing transaction costs to protecting social status signaling
“akin to tattoos and piercings for the relatively well-to-do” is
unclear.49 Harrison claims that this judicial expansion of post-sale
confusion merely preserves the vanity of the minority at the
expense of the majority.50 “In the end,” he reasons, “subsidized
status signaling cannot be reconciled with any moral
philosophy. . . . The same values that favor limited government are
very unlikely to support taking, through taxation, from some to
subsidize those engaged in status-signaling speech or those who
gain commercially by marketing status-signaling products.”51
However, Harrison’s argument overlooks two significant consumer
protection points: (1) status signaling is not limited to the wealthy;
and (2) Harrison fails to consider the very real possibility that
consumers want such government subsidization of relative
utility—arguably the majority of consumers desire whatever
status signaling they can afford.
Similarly, Barton Beebe has argued that relative utility is an
increasingly relevant justification for modern intellectual property
because trademark and other intellectual property law is now used
“to conserve . . . our system of consumption-based social distinction
and the social structures and norms based upon it.”52 Beebe
48. Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985, 985-86
(1996) (repealed by the Trademark Dilution Revision Act of 2006, codified as amended at 15
U.S.C. § 1125(c)(1)); see also Mark A. Lemley, The Modern Lanham Act and the Death of
Common Sense, 108 Yale L.J. 1687 (1999) (discussing how a prima facie case of dilution
does not require a showing of consumer confusion); see also Roberts, supra note 28, at 579
(discussing the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c), which
increases protection of famous marks, and thus “strengthens incentives for mark-owners to
ensure their logos and brand names are well-recognized”).
49. Jeffrey L. Harrison, Trademark Law and Status Signaling: Tattoos for the
Privileged, 59 Fla. L. Rev. 195, 227 (2007). I contend that the reason for this shift to
protection of social status signaling is because this is an interest that consumers have come
to expect. See infra Part III.C.
50. Harrison, supra note 49, at 227.
51. Id. at 226.
52. Barton Beebe, Intellectual Property Law & the Sumptuary Code, 23 Harv. L. Rev.
809, 814 (2010); see also Harrison, supra note 49, at 196 (arguing that trademark law is a
form of government subsidization for signaling wealth and status); Malla Pollack, Your
Image Is My Image: When Advertising Dedicates Trademarks to the Public Domain—with
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1329
ultimately claims that this preservation of the sumptuary code53 is
undesirable because in such a system both consumers and
producers expend resources to acquire some intangible and
“meaningless” relative utility in a particular mark.54 These
resources, Beebe claims, would be better spent on absolute utility
in a modern system where copying of trademarked goods is
prevalent and such copies are often indistinguishable from an
original.55
The notion that the societal costs expended in the pursuit of
relative utility would be better spent on absolute utility is
specious. Although one could envision a world where absolute
utility is the only relevant consideration to purchasing decisions,
this simply does not map onto actual uses of trademarks. In fact,
without relative utility, trademark law would be largely irrelevant,
apart from what little information a consumer could garner about
a particular good’s absolute utility based on the trademark.
Producers would have little incentive to invest in a mark;
advertising and social classes, whether desirable or not, would be
eliminated. Relative utility has always been and will continue to
be relevant, and a world with only absolute utility is antithetical to
a trademark system. Therefore, in trademark law both relative
and absolute utility are directly relevant consumer interests, and
courts must consider both in determining the scope of trademark
protection.56
Trademarks owners are predictably happy to ride this social
signaling wave and shift to protection of relative utility. In
response to the burgeoning consumer interest in the social
signaling function of marks, owners increasingly market their
brands as lifestyle signals (for example, the TOYOTA PRIUS
automobile). However, marks cannot attain relative utility without
consumer investment in the mark, which is often generated
outside formal advertising or trademark-sponsored messaging.
an Example from the Trademark Counterfeiting Act of 1984, 14 Cardozo L. Rev. 1391 (1993)
(providing a detailed explanation of the psychology of consumer identification with goods
and clothing). Pollack traces the trend of social signaling through one’s clothes to sumptuary
laws that were enforced in classic Rome and medieval England in order to preserve caste
distinctions. Id. at 1422-27.
53. The sumptuary code is historically a way to enforce social classes and hierarchy.
See Beebe, supra note 52, at 810. This has often been accomplished through the use of
regulations that restrict the use of distinctive styles or goods that identify the particular
society’s upper class. See id. at 810-13.
54. Id. at 882.
55. Id. Beebe uses the example of copies of LOUIS VUITTON bags, of which copies and
originals are often indistinguishable, and thus the relative utility or signaling function
decreases as the bags become more prevalent. See id.
56. Nonetheless, courts must weigh this expansion of trademark law to protect relative
utility against the resulting encroachment on uses of the same mark in other contexts,
including by other consumers. As discussed in Part IV infra, a third-party neutral could
assist the court in weighing and effectively countering these concerns.
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Indeed, the consumer role is essential because, when they choose
to, consumers make a significant social investment in trademarks
as they invest a mark with meaning—including relative utility—
far beyond that which is assigned by the trademark owner.57 In
this way, consumers hold ultimate power over any given brand.58
Put differently, consumers invest trademarks with societal
meaning in a way that trademark owners cannot because “the
collective personality of culture” contributes significantly, and in
some cases exclusively, to the meaning of a trademark59—
especially its relative utility. The consumer becomes an ad hoc
“author or symbolic creator” together with the trademark owner.60
In fact, as easily as consumers are able to invest a trademark with
meaning, they can divest it of the same.61 For example, ASPIRIN,
CELLOPHANE, THERMOS, and various other trademarks all lost
their distinctiveness, and consequently also lost the protections of
trademark law, as consumers began to use these marks as generic
terms.62
Especially in a world of Facebook and Twitter, societal
meaning and relative utility is communicated more through word
of mouth than through traditional advertising campaigns. It is
well known in the advertising world that “[w]ord of mouth is more
powerful than advertising in selling—or killing—products.”63
Consumer reviews, whether positive or negative, affect consumer
perceptions of both relative and absolute utility.64 For example,
“[i]t is possible to convince people that they liked a product that
they specifically said they disliked by showing them positive
reviews (or vice versa, turning positive opinions negative).”65 In
57. Steven Wilf, Who Authors Trademarks?, 17 Cardozo Arts & Ent. L.J. 1, 15 (1999).
58. See, e.g., Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and
Cognitive Science, 86 Tex. L. Rev. 507, 551–52 (2008).
59. Wilf, supra note 57, at 4-5.
60. Id. at 2-3. Wilf argues that this “act of collective labor establishes a stake to
trademark symbolism contemporaneous with any private claims” and that therefore
“perhaps the same authorial rights granted to individual creators (such as the person or
corporation that affixes signs upon consumer goods) can be attributed to the public as well.”
Id. Although I believe granting ownership rights to consumers is a risky proposal and would
shift the focus of trademark law too far away from producer protection, Wilf’s position
further illustrates the power consumers have over trademarks.
61. Id. at 39-40.
62. King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963)
(THERMOS); DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir. 1936)
(CELLOPHANE); Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (ASPIRIN).
63. Tushnet, supra note 58, at 551. Advertising companies have taken note of this, as
evidenced by the growing number of celebrity Twitter endorsements that appear to be
voluntary but are actually paid endorsements. See Inside Edition–Celebs Tweeting for Big
Bucks, Inside Edition, http://www.insideedition.com/storyprint/3993/celebs-tweeting-for-bigbucks.aspx (last visited Dec. 15, 2010).
64. Tushnet, supra note 58, at 551.
65. Id. at 551-52.
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this way, a trademark can achieve the meaning the mark owner
desires only when consumers embrace the meaning (or at least
acquiesce to it). Trademark owners therefore have an incentive to
produce high-quality goods and services (absolute utility) in order
to build the arguably more essential consumer interest of relative
utility.66 This is especially true because dissatisfied customers
recount their negative experiences far more frequently than a
satisfied customer communicates his or her positive experience.67
Consumers’ societal investment and public authorship of
trademarks is especially evident in the concept of secondary
meaning. In the case of a descriptive mark, a producer will first
affix the mark to a product. Then, if, and only if, the public
associates the mark with the product, the mark achieves secondary
meaning.68 Hence, a descriptive mark that has achieved secondary
meaning was imbued with such meaning through “public
association of a pre-existing word and an already owned object.”69
Interestingly, this conception, when viewed from a Lockean
natural rights viewpoint, could vest an ownership interest in
consumers: “Descriptive marks borrow heavily from the linguistic
commons and require public recognition through secondary
meaning before warranting commercial protection.”70 Thus, based
on Locke’s natural rights theory, the public may actually be
entitled to use the descriptive mark that has achieved secondary
meaning outside its commercial context.71
B. Emotional Investment
In addition to the aforementioned objective signaling function,
consumers value trademarks because of their subjective, emotional
66. To complicate matters a bit more, while “quality” may sound as an objective fact,
and it may be in some cases (for example, when a consumer magazine tests various
products), in fact quality itself is mostly the result of perceptions. See Daniel Gervais,
Reinventing Lisbon: The Case for a Protocol to the Lisbon Agreement (Geographical
Indications), 11 Chi. J. Int’l L. 67, 111 (2010) (“[Q]uality is not limited to testing a product
against a strict technical standard in a mass production context. It is, [. . .] the ‘totality of
features and characteristics of a product or service that bears its ability to satisfy stated or
implied needs.’ Those ‘needs’ may be reflected in the exotic nature of the product or the
perceived qualities associated with its origin, in the same way that consumers make
purchasing decisions based on perceived quality of a brand. The needs are thus
fundamentally perceptions based on experience or information received from peers or
marketing.”) (footnotes omitted).
67. See, e.g., Pete Blackshaw, Satisfied Customers Tell Three Friends, Angry
Customers Tell 3,000: Running a Business in Today’s Consumer-Driven World 12 (2008).
68. Wilf, supra note 57, at 33.
69. Id. at 35.
70. Id.
71. Id.
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appeal.72 As marks are increasingly marketed as lifestyle signals—
partially in response to the consumer interest in social signaling
discussed above—consumers also invest in brands emotionally,
often defining their public persona and even their sense of “self” by
the way a brand makes them feel or what the brand communicates
to others as a matter of relative utility. In this way, consumers
“invest psychological meaning, as seen in the significant sales of
goods emblazoned with the old-fashioned Coca-Cola mark . . . .”73
In fact, our worldview and sense of self “is shaped by the words we
use and by the images that fill our fantasies.”74 Therefore, one may
“feel energetic when drinking PEPSI, cool when driving a Chrysler
300C with a HEMI engine, important while shopping at
NORDSTROM, caring when buying a HALLMARK card, and
‘arrived’ when wearing a ROLEX watch.”75 The Supreme Court
itself has acknowledged that “[t]he protection of trade-marks is the
law’s recognition of the psychological function of symbols.”76 Some
have gone so far as to compare trademarks to religion because
brands help people define themselves and communicate that
definition to others in the post-sale environment.77 Therefore,
trademarks can create a sense of community centered on a specific
brand.78
In a rather stark example of Harrison’s relative utility tattoo
analogy,79 a twenty-four-year-old Internet entrepreneur tattooed a
NIKE swoosh on his navel, stating that “looking at the symbol
each morning ‘pump[ed] [him] up for the day.’”80 According to him,
the tattoo reminded him to “Just Do It” every day.81 For this
person, the emotional investment in Nike’s trademark was so
significant that viewing the trademark each morning was integral
to his sense of self.
Furthermore, the very concept of the trademark dilution
doctrine encapsulates the intangible, emotional qualities of a
trademark. In his seminal law review article, Frank Schechter
argued for dilution, stating that the function of a trademark in
modern commerce was no longer to identify a producer, but was
72. See generally Jessica Litman, Breakfast with Batman: The Public Interest in the
Advertising Age, 108 Yale L.J. 1717, 1727-30 (1999).
73. Wilf, supra note 57, at 17.
74. Kozinski, supra note 43, at 974.
75. Jerre B. Swann, An Interdisciplinary Approach to Brand Strength, 96 TMR 943,
952 (2006).
76. Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205 (1942)
(emphasis added).
77. Kevin Lane Keller, Strategic Brand Management 8 (2008).
78. Swann, supra note 75, at 953.
79. Harrison, supra note 49, at 227.
80. Naomi Klein, No Logo 52 (1999).
81. Id.
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intended to “identify a product as satisfactory and thereby to
stimulate further purchases by the consuming public.”82 Thus,
dilution is actually theoretically linked to consumer satisfaction,
not the financial worth of a mark.
Not all scholars believe that trademark owners should appeal
to consumers’ emotions or that courts should embrace such
practices. Ralph Brown argued that “persuasive” advertising is
undesirable because it seeks to “impregnate the brand with . . .
powerful emotional stimulants, and so influence consumers to
spend money on impulsive, unnecessary and expensive branded
goods.”83 In this way, arguably emotional advertising encourages
consumers to pay a premium for trademarked goods that are not
functionally superior to generic substitutes.84 Similarly, Glynn
Lunney has argued that the protection of intangible aspects of a
mark, such as its emotional appeal, is socially wasteful.85
Although Brown and Lunney’s criticisms are well received
from a normative perspective, consumers clearly derive value from
the emotional allure of trademarks and have invested a
considerable amount of emotional capital in emotionally appealing
marks. Moreover, modern advertisers have consistently capitalized
on this emotional appeal. In the 1930s, Coca-Cola used the iconic
and emotionally charged figure of Santa Claus to advertise its
product.86 Coca-Cola still uses emotional advertising to reach
consumers today, focusing more on customer loyalty and “brand
love” than actual product sales because, according to Coca-Cola,
the former leads to the latter.87
82. Frank Schechter, Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813,
818 (1927) (emphasis added).
83. Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade
Symbols, 57 Yale L.J. 1165, 1175 (1948). Compare Robert G. Bone, Hunting Goodwill: A
History of the Concept of Goodwill in Trademark Law, 86 B.U. L. Rev. 547 (2006) (arguing
that protecting positive feelings as part of the sellers goodwill is unnecessary) and Glynn S.
Lunney, Jr., Trademark Monopolies, 48 Emory L.J. 367, 437-39 (1999) (arguing that
protection of the value of trademarks beyond basic identification of source, such as the
protection of trademark prestige or “selling power,” exceeds the costs of competition and is
socially wasteful) with Shahar J. Dilbary, Famous Trademarks and the Rational Basis for
Protecting “Irrational Beliefs”, 14 Geo. Mason L. Rev. 605 (2007) (arguing that consumers
derive value from the intangible aspects of branded products and for strong trademark
protection).
84. See generally id.; Edward Chamberlain, The Theory of Monopolistic Competition
(5th ed. 1946).
85. Lunney, supra note 83, at 437-39.
86. Coca-Cola’s Santa Claus, Not the Real Thing!, BevNet.com, Dec. 15, 2006,
http://www.bevnet.com/news/2006/12-18-2006-white_rock_coke_santa_claus.asp.
87. Rachelle Matherne, Coca-Cola Wants You to Get Emotional, SixEstate Comms.,
May 25, 2010, http://sixestate.com/social-media/coca-cola-wants-you-to-get-emotional.
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C. Financial Investment
Furthermore, consumers invest a significant amount of capital
in trademarks, both financial and informational.88 First,
consumers invest financial capital in a trademark when they
consciously choose to purchase one brand over another.89 When
consumers purchase a good bearing a trademark, they are
subsidizing the trademark owner’s advertising costs, which are
expended to create product differentiation, to sustain quality, and
to reduce consumer search costs, all of which the consumer pays
for and invests in when he or she purchases the trademarked
good.90
Second, as consumers purchase trademarked goods, they
become familiar with the product and the absolute utility of the
mark owner’s goods, thus investing informational capital in those
marks. In turn, consumers earn a return on the investment in the
form of the ability to use the marks as “informational tools” to
reduce search costs when making purchasing decisions.91 However,
in recent years mark owners have begun to interfere with
consumers’ ability to collect on this return. For instance, some
trademark owners have attempted to prevent search engines from
using their marks to link to and recommend similar products to
consumers when the consumer uses the primary trademark as a
search term.92 As a normative matter, this interference with
returns on consumer investment is undesirable: if sales are lost
because a consumer uses a particular trademark to find a lower
price or better product via an online search engine, the benefits to
consumers outweigh the harm to trademark owners.93 Moreover,
such interference with consumers’ informational tools may
influence consumer expectations in ways that may affect the way
courts define confusion.94
Consumers’ interests in trademarks are vast and varied.
Clearly, they are not adequately explained in purely economic
88. Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the
Pepsi Generation, 65 Notre Dame L. Rev. 397, 402 (1990) (explaining ways the public may
contribute to a brand’s value by identifying with logos); Litman, supra note 72, at 1730
(explaining that trade symbols earn value from the public investing in those symbols).
89. Wilf, supra note 57, at 17.
90. Id.
91. Deborah R. Gerhardt, Consumer Investment in Trademark, 88 N.C.L. Rev. 427, 484
(2010).
92. See, e.g., Tiffany, Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008); Gov’t
Employees Ins. Co. v. Google, Inc., 77 U.S.P.Q.2D (BNA) 1841 (E.D. Va. 2005). For more on
this new type of sponsored link confusion, see generally 2-7A Gilson on Trademarks § 7A.09
(2010).
93. Gerhardt, supra note 91, at 484; see also id. at 485 (advocating a “truthful
informational tools” exception).
94. See infra Part III.B.
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terms. Relevant consumer interests include social signaling in the
post-sale environment, as well as social, emotional, and financial
investment in trademarks. The prevention of post-sale, nonconsumer confusion about the status of the consumer who
purchased the good (relative utility) certainly indicates that courts
have a great concern for consumer interests in trademarks. As I
explain in Part III of this article, overprotection of relative
utility—primarily through the confusion doctrine and its
derivations—is causing a severe backlash so that, because of the
very protections that were intended to preserve and advance
consumer interests, consumers can no longer attain the full
relative utility for which they bargained and in which both
trademark owners and consumers have invested. Accordingly, the
signaling function that courts originally sought to protect is
rapidly eroding because of those very same protectionist efforts. It
is essential that courts carefully consider how to protect the
multiplicity of interests consumers hold in trademarks and
simultaneously avoid underprotecting or overprotecting these
interests.
III. DRIFTING FROM CONSUMER PROTECTION
A. How Courts Are Treating Consumer Interests
Trademark’s dilution doctrine is a particularly potent example
of how far courts seem to have drifted from consumer protection
considerations. Lemley and McKenna argue that, outside of cases
involving confusion in the context of sponsorship or affiliation,
confusion doctrine has been expanded too far; it now precludes the
use of a trademark even where the use does not affect a consumer’s
purchasing decision.95 Excellent examples of such overreaching by
trademark owners occur in cases where a trademark owner sues a
user because the owner believes that consumers would think that
there was some relationship between the owner and the defendant
based on the defendant’s use of the mark. For example, Emerson
disagreed with the way NBC was using its garbage disposal, which
NBC validly owned, fearing that consumers would think that
Emerson approved of dangerous uses.96 In effect, such litigation,
whether real or threatened, impedes a defendant’s use of a
particular trademarked good, which the defendant purchased and
validly owns, simply because the trademark owner disapproves of
the way in which the defendant is using the good bearing the
owner’s mark.
95. See Lemley & McKenna, supra note 16, at 414-15. Lemley and McKenna argue that
trademark law ought to only protect confusion as to quality or source of a good. Id.
96. See Belloni, supra note 3.
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The Supreme Court seems to agree with the view of Professors
Lemley and McKenna that dilution law has drifted from consumer
interests. In Moseley v. V Secret Catalogue, the Court, rejecting the
plaintiff’s dilution claim for want of a showing of actual harm,
seemed to disapprove of the current state of dilution when it stated
that “[u]nlike traditional infringement law, the prohibitions
against trademark dilution are not the product of common-law
development, and are not motivated by an interest in protecting
consumers.”97 The Court seemed to further criticize dilution when
it quoted Frank Schechter’s seminal article, reasoning that “the
preservation of the uniqueness of a trademark should constitute
the only rational basis for its protection.”98
Thus, this expansion of dilution is a slippery slope, which has
driven trademark doctrine away from the protection of consumer
interests, and will likely continue to do so. If a trademark owner
can prevent NBC from using a trademarked good in a way the
owner disapproves of, what is to stop a clothing designer from
bringing suit against a celebrity when the celebrity does something
unsavory in public while wearing a garment or carrying a bag
bearing the designer’s mark? The designer may claim that it fears
that consumer will believe the designer approves of the celebrity’s
actions.
Post-sale confusion is a second area in which courts seem to
have begun to drift from the protection of consumer interests.
Courts most often protect relative utility through the post-sale
confusion doctrine.99 The original goal of preventing confusion
among actual purchasers as to a product’s origin was eventually
expanded via the post-sale confusion doctrine to prevent confusion
among prospective purchasers. Nonetheless, it took many years for
courts to protect pure relative utility—that is, the impression a
trademark may have on a third person. As discussed in Part III.B
infra, this protection of relative utility eventually became
overprotection, which has changed consumer expectations and has
led to a fundamental shift in trademark law as courts have begun
to drift from the protection of consumer interests.
In one of the earliest post-sale confusion cases, the Second
Circuit protected the pure relative utility of the consumer who
owned the good. In the 1955 case of Mastercrafters Clock & Radio
Co. v. Vacheron & Constantin–Le Coultre Watches, Inc., the court
reasoned that there was a violation of trademark law because a
visitor who came to a home and saw the defendant’s clock on the
wall “would be likely to assume that the [cheaper look-alike] clock
97. 537 U.S. 418, 429 (2003).
98. Id. (quoting Frank Schechter, Rational Basis of Trademark Protection, 40 Harv. L.
Rev. 813, 831 (1927)).
99. See generally Tichane, supra note 46, at 399.
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was [the more expensive, trademarked] clock.”100 Therefore, the
court was protecting relative utility: the only confusion in such a
case is as to the status of the owner of the clock, or else about the
rarity of the brand.101
Then, in Levi Strauss & Co. v. Blue Bell, Inc. the Ninth Circuit
saw fit to protect Levi Strauss’s pocket stitching from Wrangler’s
infringing use, in part because “Wrangler’s use of its projecting
label is likely to cause confusion among prospective purchasers
who carry even an imperfect recollection of Strauss’s mark and
who observe Wrangler’s projecting label after the point of sale.”102
The Levi Strauss court thus created a new form of confusion “after
the point of sale” to protect the impressions of potential consumers,
but did not explicitly expand the post-sale confusion doctrine to
encompass pure relative utility as the Second Circuit did in
Mastercrafters.
Later, the Second Circuit, relying on the Ninth Circuit’s
reasoning in Blue Bell, discussed the post-sale confusion doctrine
in Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.103 There the
court reasoned that
post-sale confusion would involve consumers seeing
appellant’s jeans outside of the retail store, perhaps being
worn by a passerby. The confusion the [Lanham] Act seeks to
prevent in this context is that a consumer seeing the familiar
stitching pattern will associate the jeans with appellee and
that association will influence his buying decisions.104
Although the Second Circuit attempted to maintain focus on the
impact that post-sale confusion would have on prospective
purchasers, the only possible effect that seeing a pair of look-a-like
LEVI’S jeans on a passerby would have on a prospective purchaser
is that of relative utility. A prospective purchaser who sees the
jeans on a passerby would know nothing of the quality of the
product.105 The only information a potential purchaser could glean
from such an observation is relative utility, such as a judgment
about the status or wealth of the person wearing the jeans or the
(perhaps) mistaken belief that LEVI’S jeans are not rare (that is,
100. 221 F.2d 464, 466 (2d Cir. 1955).
101. Harrison, supra note 49, at 201.
102. 632 F.2d 817, 822 (9th Cir. 1980).
103. 799 F.2d 867 (2d Cir. 1986).
104. Id. at 872-73.
105. Gilson argues that in a case like this, where the passerby would know nothing of
the quality of the look-a-like good, there is no harm under the confusion doctrine. See 5-5
Gilson on Trademarks § 5.14 (2010). However, this position overlooks the fact that merely
seeing more of a Veblen good could decrease its relative utility where relative utility is
based on scarcity.
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not a snob good).106 Therefore, the Second Circuit went beyond
post-sale confusion of potential purchasers and protected the
relative utility of the LEVI’S trademark—that is, confusion of the
general public. Similarly, as one district court stated, “Others who
see the [counterfeit] watches bearing the Rolex trademarks on so
many wrists might find themselves discouraged from acquiring a
genuine one because these items have become too common place
and no longer possess the prestige once associated with them.”107
Some courts explicitly protect the general public from
confusion concerning trademarks.108 Other courts find confusion
only where consumers in the market for the product are
confused.109 Five circuits have held that the Counterfeit
Trademark Act is designed to prevent post-sale confusion of the
general public (as opposed to a potential purchaser) when seeing
counterfeit goods bearing a logo.110 In 2005, the Tenth Circuit
explicitly held that “the ‘likely to cause confusion, to cause
mistake, or to deceive’ test is not limited to direct purchasers of the
counterfeit goods. Instead, the correct test is whether the
defendant’s use of the mark was likely to cause confusion, mistake
or deception in the public in general.”111
As the above cases make clear, many courts, ostensibly in
service of the goal of consumer protection, have increased their
protection of relative utility in recent years to encompass pure
106. Obviously, the post-sale confusion doctrine protects more than relative utility in the
case of counterfeits copies where consumers may actually experience the absolute utility of
the good. For example, in Rolex Watch U.S.A., Inc. v. Canner the court stated that
“[i]ndividuals examining the counterfeits, believing them to be genuine Rolex watches,
might find themselves unimpressed with the quality of the item and consequently be
inhibited from purchasing the real time piece.” 645 F. Supp. 484, 495 (S.D. Fla. 1986).
107. Rolex Watch, 645 F. Supp. at 49. More recently, in Hermes International v. Lederer
de Paris Fifth Avenue, Inc., the plaintiff sued the maker of cheaper copies of the plaintiff’s
bags. 219 F.3d 104, 109 (2d Cir. 2000). The Second Circuit reasoned that “a loss occurs when
a sophisticated buyer purchases a knockoff and passes it off to the public as the genuine
article, thereby confusing the viewing public and achieving the status of owning the genuine
article at a knockoff price.” Id. (emphasis added).
108. See Gen. Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351, 356 (6th Cir.
2006) (holding that knock-offs in the stream of commerce could cause confusion “among the
general public”); Hermes Int’l, 219 F.3d at 108-09 (finding defendant liable for confusion of
“the viewing public” of knockoff luxury good); InstyBit, Inc. v. Poly-Tech Indus., Inc., 95
F.3d 663, 671 (8th Cir. 1996) (holding that “an action for trademark infringement may be
based on confusion of consumers other than direct purchasers, including observers of an
allegedly infringing product in use by a direct purchaser”).
109. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 382 (7th Cir. 1996) (holding that
“[t]he proper examination is not whether some people viewing [the product] might be
confused, but rather whether consumers in the market for [the product] are likely to be
confused”).
110. United States v. Foote, 413 F.3d 1240, 1246 (10th Cir. 2005); United States v. Hon,
904 F.2d 803, 806 (2d Cir. 1990); United States v. Yamin, 868 F.2d 130, 133 (5th Cir. 1989);
United States v. Gantos, 817 F.2d 41, 43 (8th Cir. 1987); United States v. Torkington, 812
F.2d 1347, 1353 (11th Cir. 1987).
111. Foote, 413 F.3d at 1246.
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social signaling functions. Part of the justification for this
protection is that consumers have come to expect a greater level of
social signaling from the trademarks in which they invest.
However, as discussed in the following subpart, those expectations
are actually creating a trademark system where consumers are
prevented from using trademarked goods post-sale for the very
purpose of social signaling.
B. Why Courts Appear to Have Drifted
From Consumer Protection:
Product Placement and Consumer Expectations
Consumer expectations determine whether something is
legally a trademark.112 Similarly, consumer expectations, with
some limits,113 determine whether a particular use is infringing.114
In Dastar Corp. v. Twentieth Century Fox Film Corp., the Court
rejected a claim for passing off where the origin of the good was
not in question, but stated in dicta that “[t]he [Lanham Act’s]
concept [of origin of goods] might be stretched . . . to include not
only the actual producer, but also the trademark owner who
commissioned or assumed responsibility for (‘stood behind’)
production of the physical product.”115 Dastar reflects the principle
that has driven modern Supreme Court trademark decisions:
“Trademark law aims primarily to reflect consumer perceptions
about brands and to validate their expectations as to the source of
goods in the marketplace.”116
Consumer expectations can change rapidly based on what
consumers experience in the marketplace,117 and courts then use
these expectations to determine whether a particular use of a
mark is sufficiently confusing to constitute infringement.118 If the
law is contrary to consumer expectations, consumers may be
confused if they believe the use of a mark must be authorized
112. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213 (2000) (explaining that
there is no trademark unless there is a “consumer predisposition to equate the feature with
the source”).
113. In Moseley v. V Secret Catalogue, the Court rejected the notion that mere mental
association between a trademark and the alleged infringer’s product is sufficient to prove
dilution of the mark. 537 U.S. 418 (2003).
114. See, e.g., Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)
(holding that “evidence of actual [consumer] confusion” is one of eight factors to be weighed
when determining likelihood of confusion).
115. 539 U.S. 23, 32 (2003).
116. Dogan & Lemley, supra note 13, at 501 (emphasis added).
117. Lunney, supra note 83, at 396.
118. See, e.g., Polaroid, 287 F.2d at 495 (holding that “evidence of actual [consumer]
confusion” is one of eight factors to be weighed when determining likelihood of confusion);
see also Dogan & Lemley, supra note 13, at 485-90 (discussing the idea that consumer
expectations may change trademark law).
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when in fact such authorization is not legally required. Therefore,
as Dogan and Lemley observed in the area of merchandising
rights, “a law based on eliminating consumer confusion may be
obliged to give trademark owners the right [that consumers
expect] . . . in order to avoid this confusion.”119 Professors McKenna
and Lemley have made a similar observation: “Expanding
trademark law to prevent remote prospects of confusion will
change consumer expectations in ways that may make confusion
on the basis of remote connections more likely, which might make
still further expansion of trademark law necessary . . . .”120 This
scenario, where consumer expectations affect trademark law and
trademark law in turn affects consumer expectations, is
admittedly circular.121 If trademark law proscribes a particular use
of a mark and thus requires licensing or approval, consumers will
come to expect this as the norm (even if such a norm is created by
“bad legal decisions”122), and vice versa.123
However, if trademark policy is effective, “it will [also] control
what consumers experience in the marketplace and therefore,
shape their expectations.”124 After all, in many cases,
trademark law acts as a norms creator, establishing standards
that shape rather than merely respond to consumer beliefs.
The law creates certain limiting doctrines—genericide,
trademark use, and fair use, for example—that constrain the
scope of trademark rights and that exist whether or not the
public is aware of them. Trademark’s norm-creation role is
important because it prevents a downward spiral in which the
court focuses on the most gullible consumers, lowering the
standards and expectations of others. Rigorous application of
these doctrines can affect consumer perceptions.125
Unfortunately, in recent years, courts have been rigorous in
interpreting the scope of the confusion doctrine and have expanded
the same through tangential theories of confusion such as aftermarket confusion,126 reverse confusion,127 subliminal confusion,128
119. Dogan & Lemley, supra note 13, at 486.
120. Id. at 439.
121. See Lunney, supra note 83, at 397.
122. Dogan & Lemley, supra note 13, at 487. The question of whether trademark law
should merely reflect societal norms is a broader question that is outside the scope of this
article.
123. Lunney, supra note 83, at 396.
124. Id.
125. Dogan & Lemley, supra note 13, at 487 (footnotes omitted).
126. See, e.g., Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200, 1214-16 (N.D. Ga.
1995).
127. See, e.g., Banff, Ltd. v. Federated Dep’t Stores, 841 F.2d 486, 490-91 (2d Cir. 1988).
128. See, e.g., Playboy Enters. v. Chuckleberry Publ’g, 687 F.2d 563, 567-68 (2d Cir.
1982).
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and confusion about the possibility of sponsorship.129 Thus, courts
have lost sight of their norm-creation role and, instead of shaping
consumer expectations in order to protect consumer interests, they
have validated rapidly changing consumer expectations.130 The
problem is not that courts have failed to develop an accurate
depiction of the average consumer; on the contrary, courts are
accurately reflecting consumer expectations. But this is only half of
the courts’ responsibility. They must work to shape consumer
expectations in a way that will protect the relevant consumer
interests.131 Courts must, quite literally, protect consumers from
themselves. The resulting circular norm-creation model, where
consumer expectations shape the law and the law shapes
consumer expectations, may be illustrated as follows:
The expansion of trademark law has, as Lemley and Dogan
feared,132 influenced consumer expectations so that what may have
previously been a relatively non-confusing use of a mark is now
confusing to consumers. This expansion prevents consumers from
fully realizing their desired interests in trademarks, and it can be
attributed to the expectations of consumers themselves.
Consumers expect trademarks to say something about them for
the purpose of social signaling. Accordingly, mark owners are very
careful about crafting just the right message or image they want
their mark to convey.
Product placement in movies and television has become one of
the most prevalent ways mark owners shape their brand image. In
fact, it has become increasingly relevant with the rise of
129. See, e.g., MGM-Pathe Comm. v. Pink Panther Patrol, 774 F. Supp. 869, 875
(S.D.N.Y. 1991).
130. As discussed supra, recent Supreme Court trademark decisions such as Dastar are
evidence of the fact that the Court sees one of the purposes of trademark law as validating
consumer expectations. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 32
(2003); see also Dogan & Lemley, supra note 13, at 501.
131. See supra Part II.
132. See Dogan & Lemley, supra note 13, at 487.
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technology like DVRs and online services such as HULU, which
have decreased the effectiveness of traditional 30-second
commercials.133 Thus, product placement spending has increased
from $500,000 in 1984 to more than $3 billion in 2004.134 APPLE
products alone have appeared in at least 112 films since 2001.135
FORD vehicles have been seen in at least 144 films in the past 10
years.136
There are four types of product placement: (1) “Visual”
placement, where viewers simply observe a trademarked product
or logo; (2) “Spoken” placement, where a character on a television
show or movie mentions a product; (3) “Usage” placement, where a
character “handles or interacts” with the product; and (4) “[W]hen
the storyline of the show or movie revolves around the product
itself,”137 which is generally reserved for sitcoms such as the recent
prominent placement of the iPAD tablet in ABC’s Modern
Family.138 The 2008 film Sex and the City featured numerous
product placements of all four types, including placements of
SKYY spirits, GLACÉAU VITAMINWATER beverages, and
MERCEDES-BENZ automobiles.139 These brands were featured
prominently in the film and, in exchange, the featured brands
helped market the film to the public.140 Notably, product
placement is not only a way to build relative utility, but also a way
to create more legal protection for the owner’s mark as the
trademark becomes more recognizable, and thus is provided with
more protection from dilution by the courts.141
133. Lorne Manly, On Television, Brands Go From Props to Stars, N.Y. Times, Oct. 2,
2005, http://www.nytimes.com/2005/10/02/business/yourmoney/02place.html?pagewanted=1
&_r=1.
134. Id.
135. BrandChannel.com, Tracking Brands in Films, http://www.brandchannel.com/
brandcameo_brands.asp?all_year=all_year#brand_list (last visited Jan. 16, 2011).
136. Id.
137. Roberts, supra note 28, at 619-20; see generally Cindy Tsai, Starring Brand X:
When the Product Becomes More Important Than the Plot, 19 Loy. Consumer L. Rev. 289
(2007).
138. Chris Matyszczyk, 30-minute iPad ad on ABC’s “Modern Family,” CNET News,
Apr. 1, 2010, http://news.cnet.com/8301-17852_3-10471959-71.html; see also Modern Family,
“Game Changer” (ABC television broadcast Mar. 31, 2010). Significantly, Steve Jobs, CEO
of Apple, Inc., the maker of the iPAD tablet, is also the largest shareholder in the Walt
Disney Company, which owns ABC. Oliver Chiang, IPad, Product Placement Star Of ABC’s
“Modern Family” Even Before Launch, Forbes, April 1, 2010, http://blogs.forbes.com/
velocity/2010/04/01/ipad-product-placement-star-of-abcs-modern-family-even-before-launch.
139. Stuart Elliott, “Sex and the City” and Its Lasting Female Appeal, N.Y. Times,
Mar. 17, 2008, at C8, available at http://www.nytimes.com/2008/03/17/business/
media/17adco. html; see also Sex and the City (New Line Cinema 2008).
140. Id.
141. See, e.g., Adidas Am., Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 124345 (D. Or. 2007). In Adidas, the court found that shoes that Payless had been selling bore a
confusingly similar three-stripe emblem based not on survey evidence, but on large
advertising expenditures, Adidas’s efforts developing brand identity, and its wide
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In service of the goal of careful brand image and product
placement control, there has also been an alarming number of cease
and desist letters in recent years that attempt to prevent consumers
from using a trademarked good in a way the mark owner
disapproves of and in the way consumers have come to expect—to
communicate to others and the general public something about
themselves.142 These cease and desist letters have caused many
media companies (who are also consumers) to pixilate trademarks
in television and movies in order to avoid litigation, even where the
trademark may be important to the story or where it would add a
sense of realism. The pixilation of the IN SINK ERATOR garbage
disposal in Heroes is one example. The television show Sex and the
City featured many prominent brands over the years “to establish
the reality of the world the characters lived in”; however, most
brands were used with permission.143 In a case of asking for
forgiveness rather than permission, HBO’s The Sopranos is known
for using actual trademarked goods for the sake of authenticity—
such as a scene where a character sprays Tony Soprano in the eyes
with a can of RAID insecticide.144 However, just as NBC exposed
itself to litigation for its use of the IN SINK ERATOR garbage
disposal in Heroes, so too could HBO have received a cease and
desist letter for this post-sale use. Indeed, SC Johnson, the maker of
RAID insecticide, stated that it would not have authorized this use
of the product.145 These cease and desist letters are understandable
given the large amount of money and time mark owners spend
cultivating their desired brand image through product placement.146
Nonetheless, the prevalence of cease desist letters, product
placement, and pixilation has caused consumers to believe they too
need post-sale permission from a trademark owner to use
merchandise with a trademark in a certain way.147 This has
recognition. Adidas spent eighty million dollars in marketing in 2007, Stephanie Kang, New
Balance Steps Up Marketing Drive, Wall St. J., Mar. 21, 2008, at B3, a good portion of which
was spent on product placement, see BrandChannel.com, Tracking Brands in Films,
http://www.brandchannel.com/brandcameo_brands.asp?all_year=all_year#brand_list
(last
visited Jan. 16, 2011) (recording that the ADIDAS brand has appeared in thirty-seven films
since 2001).
142. Newman, supra note 34, at 360 (“Expanding the reach of trademark law to permit
post-sale control over the use of logos will rescind the deal struck between consumers and
merchandisers when brand merchandise is bought—the deal that people pay extra for a
brand in order to send public social signals to one another.”). There are many websites
dedicated to cataloging these cease and desist letters. See, e.g., Chilling Effects
Clearinghouse, www.chillingeffects.org (last visited Dec. 12, 2010).
143. Elliott, supra note 139, at C8.
144. Michael McCarthy, HBO Shows Use Real Brands, U.S.A. Today,, Dec. 12, 2002,
http://www.usatoday.com/money/advertising/2002-12-02-sopranos_x.htm.
145. Id.
146. See supra notes 133-36 and accompanying text.
147. Newman, supra note 34, at 359.
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prompted courts to expand the confusion doctrine to encompass
such uses and validate the expectations of the reasonable consumer,
without considering how this may affect consumer interests.
Similarly, trademark owners have tried to control the
discourse related to their mark by enjoining unauthorized uses.148
For example, in 2003, ViewSonic Europe Limited sent a cease and
desist letter to the website viewsonicsucks.com, claiming that the
website domain name infringed ViewSonic’s registered trademark
VIEWSONIC.149 The website was dedicated to criticizing
VIEWSONIC products and the company more generally. The
specific post that prompted the letter was one containing allegedly
defamatory remarks about an employee of ViewSonic and the
company simply requested that the specific post be removed.
However, the website is no longer in existence. There was clearly
no confusion about whether ViewSonic was associated with this
website. But ViewSonic was, in effect, relying on trademark law to
control the public discourse related to its mark.150 Again, such
action leads consumers to believe that all such use of a mark must
be authorized, prompting courts to take such expectations into
account when determining whether a given use is confusing.
Part of the reason cease and desist letters have such a chilling
effect is the confusing state of many areas of modern trademark
law. The delicate weighing of consumer expectations and consumer
interests has caused courts to lose their way and users to lose the
ability to accurately predict the outcomes of trademark litigation.
In this way, the law’s ambiguity prolongs litigation, thus
increasing costs and encouraging the recipients of cease and desist
letters to comply with the request—regardless of the recipient’s
belief about the letter’s legitimacy—and discouraging other
consumers from using trademarks at all.151 Recall that NBC did
not believe there was any trademark violation in the way it used
148. Id.; see also Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 544 (5th Cir. 1998)
(finding that confusion over whether plaintiff gave permission for defendant’s use was
actionable); Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd., 34 F.3d 410,
415-16 (7th Cir. 1994) (finding actionable confusion based on possibility that consumers
would mistakenly believe that plaintiff had given permission for the defendant’s use);
Anheuser-Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769, 772, 775 (8th Cir. 1994) (finding
actionable confusion where consumers believed that plaintiff gave permission for the
defendant’s use); Mut. of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398-402 (8th Cir. 1987)
(finding infringement of “Mutual of Omaha” trademark by use of the phrase “Mutant of
Omaha” on a t-shirt based in large part on survey that found ten percent of consumers
believed that the plaintiff “went along with” the use); Univ. of Ga. Athletic Ass’n v. Laite,
756 F.2d 1535, 1546 (11th Cir. 1985).
149. See Letter from ViewSonic Europe Limited to Synergy Global Networks (Aug. 18,
2003), available at http://www.chillingeffects.org/protest/notice.cgi?NoticeID=779.
150. The most likely theory would have been tarnishment. The cease and desist letter
specifically referenced copyright and defamation law. Id.
151. For more on the chilling effect of trademark law expansion, see generally
McGeveran, supra note 10.
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the IN SINK ERATOR garbage disposal, and yet the trademark
was pixilated in future broadcasts and on the DVD.152
Therefore, consumer interests, specifically post-sale use and
social signaling, have suffered because mark owners are placing
their products more often and in more strategic ways,153 and are
consequently attempting to have more post-sale control over goods
bearing their marks. For example, most would likely agree that
Andy Warhol’s use of a CAMPBELL’S soup can in his famous 1968
painting is not a product placement or any other type of use that
would confuse consumers. And yet NBC’s use of a trademark in
Heroes in 2006 was an artistic use that spawned litigation. Are
these two examples fundamentally different, or does the temporal
distinction point to an actual shift in society’s understanding of
trademark placement, with a resulting broadening of the likelihood
of confusion? If the answer is the latter, it is likely attributable to
changing consumer expectations about product placement as a
result of its pervasiveness, the chilling effects of cease and desist
letters, and the courts’ attempts to conform trademark doctrine to
what they perceive as consumer expectations. Given that the uses of
CAMPBELL’S, IN SINK ERATOR, RAID, and VIEWSONIC are
non-confusing uses (that is, most consumers would realize that the
mark owner does not encourage or endorse the given use) and, more
importantly, seem unlikely to affect purchasing decisions,
consumers who wanted to use these trademarked goods and validly
purchased them should not be the ones to pay for the way some
consumer expectations have changed in response to the actions of
mark owners and the drifting consumer protection rationale of
trademark law.
This expansion of trademark protection for mark owners also
threatens free speech, including the dissemination of information
by consumers to consumers, as well as the critique or parody of
famous brands.154 And yet consumers cannot rely on the First
Amendment to vindicate their interests. Trademarks are generally
considered commercial speech when the mark is used to identify
source and quality, and such speech is afforded less First
Amendment protection than other types of speech.155 Even where
commercial speech is not involved, as with artistic works, the First
152. Belloni, supra note 3.
153. The senior vice president for marketing at Glacéau stated in reference to the Sex
and the City film that it carefully controls its brand image by only placing it in films or
television series that are a “natural fit” for the brand. Elliott, supra note 139, at C8.
154. See generally Robert C. Denicola, Trademarks as Speech: Constitutional
Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 Wis. L.
Rev. 158 (1982).
155. See generally San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S.
52 (1987); Cent. Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557
(1980).
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Amendment is of no help to consumers seeking to defend against a
finding of confusion because most courts protect the property
rights of trademark owners over individual rights of free
expression—at least where there are means of communication
other than the given mark. When a consumer uses a mark to
communicate ideas (including social signaling) rather than to
identify a product’s source, most courts have held First
Amendment interests were sufficiently protected when they grant
a trademark injunction against the consumer’s use because
adequate alternative means of communication other than the
trademark itself exist for the defendant to convey his or her
message.156 However, there is arguably no adequate alternative
means of communicating what a given mark would say about the
consumer who owns it—that is, the relative utility of the mark.157
Consequently, because consumers cannot rely on the First
Amendment as a defense based on existing jurisprudence, in order
to protect their interests, consumers must rely on courts to
accurately weigh consumer interests against rapidly changing
consumer expectations. One could also argue, however, that if
courts are willing to expand trademark law to protect relative
utility based on a shift in consumer expectations, they should also
be willing to reconsider the strength of First Amendment defenses
in the face of the much broader scope of the prohibition on the use
of trademarks.
Indeed, the developments in confusion and trademark law in
general are not consistent with the protection of consumer
interests. They are, however, arguably consistent with current
consumer expectations.158 For instance, the expansion of the
restriction on post-sale use through dilution and other doctrines,
though consistent with consumer expectations, is not consistent
with consumer interests because consumers usually own the
trademarked goods and the courts virtually ignore that ownership
as mark owners consistently restrict or prevent post-sale use. The
danger is that this trend will extend to any consumer use of a
trademarked good. If a consumer posts a video on YouTube or a
picture on Facebook in which the consumer is doing something
156. See, e.g., Mut. of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987)
(rejecting First Amendment defense as long as alternative means, not restricted by the
injunction, existed by which the defendant could express his views); Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979) (rejecting a First
Amendment argument on grounds that property rights, such as trademark rights, can
supersede the exercise of free speech when alternative means of communicating the
message are available).
157. Many would undoubtedly argue that there is no substitute for what an authentic
LOUIS VUITTON bag would say about their social or financial status.
158. As discussed supra, consumer interests are the normative considerations that
trademark law ought to consistently consider and protect; consumer expectations change
constantly and are what courts use to determine whether a use is actually confusing.
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1347
unsavory while wearing a NIKE t-shirt, should Nike be able to
restrict this use through the ever-expanding post-sale confusion
doctrine? While such a restriction is arguably consistent with the
expectation that every public or quasi-public use of a mark must
be authorized, it hardly seems to reflect the broader interests of
consumers, or indeed their property rights in the goods bearing the
protected mark. If the trajectory of the evolution of the post-sale
confusion doctrine is not bent to adequately reflect consumer
interests, consumers will all be like the “sandwich-board men” of
Victorian London, walking around promoting trademarks and
their owners, but with very little freedom to move.
Therefore, the subjective “reasonable consumer” standard in
trademark law’s confusion doctrine—combined with changing
consumer executions and the courts’ hasty validation of those
expectations—has harmed consumer interests and prevented
consumers from receiving the full benefit of the post-sale use of
trademarks in which they have invested. What began as the
protection of the consumer interest in preserving the relative
utility of certain trademarks has prevented consumers from, in
many cases, utilizing the signaling function at all.159 Courts do
intend to protect consumers, as they make clear in the reasoning of
various trademark decisions. However, as countless scholars have
recently asserted, the actual judgments and outcomes of these
decisions have contributed to the decline of consumer protection—
the same protections that the courts themselves have been
attempting and claiming to preserve.
IV. SURVEYING CONFUSION AND SHAPING
CONSUMER EXPECTATIONS
The social signaling function of a trademark is an interest that
consumers desire. In response, trademark owners have embarked
on advertising campaigns for the specific purpose of creating and
fostering relative utility. Therefore, because trademarks are now
often marketed as lifestyle signals, consumers invest in the brand
financially, emotionally, and socially and have earned a return on
that investment. However, as social signaling has become an
159. See, for example, Paul Alan Levy, The Trademark Dilution Revision Act—A
Consumer Perspective, 16 Fordham Intell. Prop. Media & Ent. L.J. 1189, 1889–91 (2006),
describing a case where the Public Citizen’s Health Research Group published a book on
“the dangers posed by a class of tranquilizers, the benzodiazepines, that it felt were being
widely over-prescribed and abused,” the most common of which was VALIUM tranquilizer.
Hoffman LaRoche, the maker of VALIUM, sued the Public Citizen Health Research Group
on the basis of trademark infringement. Faced with the costs and uncertainty of prolonged
discovery and litigation, Public Citizen settled. Future versions of the book contained a
more detailed disclaimer than the initial version, and edits were made to make clear that
VALIUM was not the only drug in the class of drugs about which the book was written.
Therefore, Hoffman LaRoche, through trademark law, successfully controlled the public
discourse related to its mark.
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increasingly relevant consumer interest, trademark owners have
also been more careful about who or what is associated with their
marks in the post-sale environment, using litigation and threats
thereof to curtail undesirable uses. When faced with these cases,
courts must assess consumer expectations to determine whether
there is actionable infringement. And now, as a result of the
chilling effects of cease and desist letters and the prevalence of
product placement, consumer expectations are changing—many
consumers are confused by virtually any post-sale use. Thus,
courts, in accordance with consumer expectations, have been quite
zealous in restricting unauthorized post-sale uses. The result is a
world where courts, in the interest of protecting consumer
interests (including relative utility), have allowed trademark
owners to assert almost complete control over the post-sale use of
their marks and goods bearing them, which has dramatically
impeded both the ability of consumers to use trademarks for social
signaling as well as other consumer interests.
It is imperative that the courts find a way to effectively
balance these considerations. As a normative matter, they must
protect consumer investment and give both consumers and
trademark owners the opportunity to develop relative utility
because these are important consumer interests. Simultaneously,
courts must consider the ever-changing, more pragmatic
expectations of consumers, keeping in mind the norm-creation role
of the courts in shaping these same expectations. It is especially
important that courts fulfill these dual aims because consumers
are not represented in traditional trademark litigation, and
therefore, under the current regime, the court is more likely to find
confusion where the majority of consumers may not actually be
confused because a plaintiff might convince the court that
confusions exists.160
Professors Lemley and McKenna have advocated for
narrowing confusion so that only confusion that is actually
relevant to purchasing decisions would be actionable—that is,
confusion about the actual source of an alleged infringer’s product
or service.161 For example, most consumers would not decline to
purchase an IN SINK ERATOR garbage disposal unit simply
because of the way it was portrayed on Heroes; nor would most
consumers avoid using or purchasing RAID insecticide because it
160. See Michael Grynberg, Trademark Litigation as Consumer Conflict, 83 N.Y.U. L.
Rev. 60 (2008) (advocating for a consumer-conflict view of trademark litigation). Grynberg
explains that courts in most cases do not adequately protect the interests of non-confused
consumers because the plaintiff in a trademark suit naturally “protects” confused
consumers, while the defendant simply rebuts confusion, resulting in a “two-against-one”
scenario. Id. at 62. Therefore, according to Grynberg, courts are actually more likely to find
confusion where there is none because consumers are not represented in the typical
trademark suit.
161. See Lemley & McKenna, supra note 16, at 414-15.
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was sprayed in Tony Soprano’s eyes. If anything, such uses are
free publicity for the brand.
Although limiting actionable confusion to confusion that
affects consumers’ purchasing decisions is an excellent first step,
courts would still have to determine what is actually relevant to
the majority of consumers; the subjective “reasonable consumer”
standard, which has, together with changing consumer
expectations, caused the decline of the protection of consumer
interests, would still be incorporated into the confusion inquiry.
Moreover, such a narrowing of confusion would not adequately
protect the consumer interest in the relative utility of trademarks.
The perceived lack of rarity of a LOUIS VUITTON bag due to a
proliferation of unauthorized copies is not confusion about the
source of a product, and yet lack of rarity certainly adversely
affects relative utility. Lemley and McKenna instead advocate for
treating such cases as false advertising claims, abandoning
trademark protection altogether. This abandonment, however, is
not necessary if the courts can effectively shape consumer
expectations.
In order to fulfill their norm-creation role and balance actual
consumer expectations against the need to shape those
expectations, courts must know what consumer expectations are in
the first place. Because courts do not have the necessary resources,
they rely on the parties to a trademark suit to gather information,
typically through surveys, regarding the confusion and
expectations of the typical consumer. Although surveys are now
regarded as the most probative available evidence of consumer
confusion and expectations,162 they are met with a healthy amount
of skepticism because the predictably biased parties to trademark
litigation gather and conduct these surveys.163 Parties can easily
formulate survey questions to illicit a response that is favorable to
the party’s position.164 A series of questions used in a survey
conducted in Sears, Roebuck & Co. v. All States Life Insurance Co.
illustrates this power of suggestion.165 In Sears, Roebuck, Sears
conducted a survey to determine whether consumers were
confused over the defendant’s use of “All States Life Insurance”
162. See 3-8 Gilson on Trademarks § 8.11(1) (2010).
163. See Indianapolis Colts, Inc. v.
416 (7th Cir. 1994) (calling surveys
researcher’s black arts”); see generally
science to show the powerful influence
results).
Metro. Baltimore Football Club Ltd., 34 F.3d 410,
in Lanham Act cases a product of the “survey
Tushnet, supra note 58, at 527-45 (using cognitive
survey techniques such as context can have on the
164. See, e.g., Gerald Zaltman, How Customers Think: Essential Insights into the Mind
of the Market 171 (2003) (“In one study, researchers discovered that consumers described
their most recent experience at a bar differently depending on the reason they were given
for being interviewed.”)
165. 246 F.2d 161, 171 (5th Cir. 1957).
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and Sears’ use of “Allstate Insurance.”166 However, the first two
questions contained the words “Westinghouse” and “Kodak,” both
of which were associated with Sears at the time.167 The court found
that Sears did “not fairly present[] the name All States Life
Insurance Company until after two questions had been asked
which if correctly and properly answered called to mind Sears,
Roebuck & Company.”168 The questions were as follows:
(1) What comes to your mind when I say the brand name
“Westinghouse”?
(2) What does the brand “Kodak” mean to you?
(3) What does “Allstate” mean to you?
(4) If you wanted Allstate insurance, where would you go?
(5) Have you ever heard of All States Life Insurance
Company?
(6) Who would you say owns All States Life Insurance
Company?169
Therefore, the court affirmed the trial court’s exclusion of the
survey because it is “not truly illustrative of what the public thinks
to permit one party to propound questions chosen on its behalf,
however fairly attempted, with no opportunity given to the other
party to test the answers given by the persons interviewed.”170
Biased surveys add an extra analytical dimension to what is
already a challenging puzzle for courts: determining what the
relevant consumer expectations actually are and to what extent
those expectations must be managed to protect consumer interests.
When interpreting survey evidence, which may or may not
accurately reflect consumer expectations, courts walk a fine line,
discussed above, between (1) effective protection of consumer
interests, keeping in mind the court’s norm-creation role in
shaping consumer expectations, and (2) overprotection of consumer
interests by strict adherence to changing consumer expectations
and simultaneous neglect of the norm-creation role. Recently,
courts have begun to lean too far toward this second scenario, and
have thus failed to sufficiently shape consumer expectations in a
way that will protect consumer interests.
The courts need assistance in balancing these often competing
and extremely complicated consumer protection considerations.
This is difficult because consumers are not represented in
trademark litigation. Where resolution of a conflict requires
166. Id.
167. Id.
168. Id. at 172.
169. Id. at 171.
170. Id.
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analysis of complicated and highly specialized issues, parties will
often elect arbitration or mediation rather than traditional
litigation. However, it is highly unlikely that plaintiffs will assent
to arbitration of all trademarked disputes, and it is certainly a
plaintiff’s right to have his or her day in court. Therefore, I propose
the addition of a third party to trademark litigation—a guardian
ad litem of sorts—who would conduct surveys, advocate for
consumers more generally, and advise the court of relevant
consumer interests and how to shape consumer expectations in a
way that will protect those interests.171
When a particular case involves the interests of an infant and
he or she is unrepresented in the litigation, “the court has a duty
to appoint a guardian ad litem or next friend to assure the
protection of the child’s interests.”172 The guardian does not
represent the minor as his or her attorney, but rather is charged
with the duty of protecting the rights and best interests of the
child, including making recommendations to the court on behalf of
the minor.173 Although the guardian ad litem is often an
individual, courts may also appoint an administrative agency to
serve as a guardian ad litem.174
Nearly all trademark litigation affects the rights of consumers,
whether directly in a case where the defendant is a consumer
being sued over post-sale use, or indirectly where the outcome of
the case will shape consumer expectations. Except in the rare case
where consumer interests are consistent with the position of one of
the parties to the litigation, consumers are not directly
represented in the typical trademark case. Therefore, just as
courts appoint a guardian ad litem to represent a minor when a
suit affects the rights of the minor and the minor is not
represented by any party to the litigation, so too in order to protect
consumers in trademark litigation a guardian ad litem should be
appointed and charged with the duty of protecting the interests of
consumers.
There are two figures, both of which are familiar to trademark
litigation, which could serve as consumers’ guardian ad litem. The
first is the examining attorney who participated in the litigation of
the trademark application for the plaintiff’s mark. The examining
attorney would be familiar with the mark, any confusingly similar
marks, and any opposition to the initial trademark registration.
171. This solution could be applied to likelihood of confusion analysis, where consumer
expectations (actual confusion) is an explicit factor, see, e.g., In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), as well as to dilution cases where the court
must assess whether the distinctive quality of the mark has been diluted, 15 U.S.C. §
1125(c)(1) (2006).
172. 42 Am. Jur. 2d Infants § 161 (2000).
173. 42 Am. Jur. 2d Infants § 172 (2000 & Supp. 2010).
174. See Uniform Act on Parentage § 9 (1973).
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Nevertheless, such intimate knowledge of the mark and parties
involved in the litigation is not necessarily essential information
for an impartial consumer advocate. Thus, the second option—a
court-appointed expert—could be as effective as the examining
attorney, if not more so. The expert could be selected from a
variety of disciplines ranging from economists to sociologists, and
would simply need to have knowledge of consumer interests in
trademarks, consumer expectations, and the market forces that
shape consumer expectations.
A court-appointed guardian ad litem finds support in current
federal court practice. Federal Rule of Evidence 706 authorizes a
court to appoint an expert witness either sua sponte or upon the
motion of one of the parties.175 Parties to trademark disputes often
prefer to retain their own experts because such experts are
obviously more likely to make conclusions consistent with that
party’s position. Thus, although court-appointed experts may
perform consumer surveys on behalf of the parties, this is rarely
done. Furthermore, court-appointed experts do not typically advise
the court of the ramifications of a finding of confusion, or a contrary
finding, upon consumer interests. Like the selection of a courtappointed expert under the Federal Rules of Evidence, nothing
would prevent a party to trademark litigation from calling his or her
own expert to respond to the court-appointed guardian ad litem.176
There are two principle tasks, identified above, that make
consumer protection a daunting and amorphous task, and with
which the guardian ad litem would assist the court: (1) advising
the court as to the proper way to balance consumer interests
against consumer expectations; and (2) conducting and
interpreting consumer surveys,177 divining from them what actual
consumer expectations are.
The principal responsibility of the consumer guardian ad litem
would serve to ensure that the court is properly shaping consumer
expectations and fulfilling its norm-creation role. This assistance is
crucial given that the courts have not heretofore effectively shaped
consumer expectations, but rather have overprotected consumers
based on current consumer expectations, thereby harming consumer
interests.178 The simple fact of assessing those interests without the
filter of one of the parties’ bias would itself generate better
outcomes. Indeed, the consumer guardian ad litem would assist the
court in understanding both the impact that judicial decisions have
175. Fed. R. Evid. 706(a).
176. Id. at 706(d) (“Nothing in this rule limits the parties in calling expert witnesses of
their own selection.”).
177. Although cost allocation may be an issue, it makes sense for parties to share
equally the cost of conducting the surveys, just as is done with court-appointed experts
under the Federal Rules of Evidence. Id. at 706(b).
178. See supra Part II.C.
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on consumer expectations and the current state of consumer
expectations, including how the court can work to shape them. In
this way, the guardian ad litem would help courts protect consumer
interests, striking a balance between norm-creation on the one
hand, and adherence to current consumer expectations on the other.
Courts would have the benefit of the expertise and efficiency of a
specialized judiciary or administrative agency, without the expense
of creating an entirely new trademark dispute resolution system.179
Although courts are constitutionally limited to adjudicating
cases or controversies and are not explicitly charged with setting
policy,180 the courts are no strangers to shaping social and
economic policy.181 The judiciary is not bound to be merely a
reflection of popular beliefs or expectations. If this were the case,
important constitutional decisions such as Brown v. Board of
Education182 would have never been decided as they were. In fact,
according to the Legal Realist school of thought, policy
considerations are something every judge considers or should
consider, and thus courts should be explicit in their reliance on
the same.183 Of course, courts are realistically limited in the
degree of social reform they may champion because the judiciary
has no power over the “sword or the purse . . . .”184 Moreover,
judicial activism has frequently been sharply criticized as
antithetical to democratic ideals.185 Nonetheless, as history
179. Specialized intellectual property judiciaries have proven to be efficient in other
countries. For instance, “Germany’s use of a specialized judiciary is said to have resulted in
more than 90% of patent infringement cases being settled without any expert evidence,
saving time and money for the parties involved.” World Intellectual Property Organization,
How Can Facts Be Proven in IP Litigation?, http://www.wipo.int/enforcement/en/faq/
judiciary/faq10.html (last visited Dec. 12, 2010).
180. See U.S. Const. art. III, § 2, cl. 1.
181. See generally Gerald N. Rosenberg, The Hollow Hope: Can Courts Bring About
Social Change?, at xiv (1991) (“[T]he assertion that judges have historically played only a
submissive part in our political structure and that anything more than that is illegitimate. .
. . is false history, designed to weaken an institutional that the founders of this country
intended to be one of three coequal branches of government.”).
182. 347 U.S. 483 (1954). Despite the fact that segregation was the social norm, the
Warren Court held that racial segregation in public schools is unconstitutional and that
separate but equal is inherently unequal in the context of public education. Id.
183. See generally John Henry Schlegel, American Legal Realism & Empirical Social
Science (1995).
184. The Federalist No. 78 (Alexander
http://www.constitution.org/fed/federa78.htm.
Hamilton)
(1788),
available
at
185. See, e.g., Max Boot, Out of Order: Arrogance, Corruption, and Incompetence on the
Bench 93 (1998) (“America used to be a democracy, a government of, by, and for the people.
Now it has all the earmarks of a juristocracy, a government of, by, and for people who have
attended law school. Judges have assumed unprecedented authority over our lives, usurping
the powers once delegated to elected lawmakers, based on no solid grounding in the text of
either a statute or the Constitution itself.”). Compare id. with Mark Kozlowski, The Myth of
the Imperial Judiciary: Why the Right is Wrong about the Courts (2003) (arguing that
without the Supreme Court’s increasingly enlightened interpretation of the Constitution,
the United States would not enjoy the breadth of freedoms she does today).
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makes clear, the courts have an important role in shaping the
expectations of both consumers and society as a whole; a
consumer guardian ad litem would be an invaluable resource for
courts as they navigate this duty.
The second responsibility of the consumer guardian ad litem—
interpretive guidance—is essential because the court must know
what current consumers expectations are before it can consider
them or attempt to shape them. The consumer guardian ad litem
could perform consumer surveys; this would eliminate survey bias,
which can obfuscate the current state of consumer expectations.186
The guardian ad litem would interpret the surveys in light of an
informed view of consumer interests. Where necessary, the
guardian ad litem could protect consumers from themselves,
advising courts not to allow consumer expectations to be
controlling because to do so might affirm those expectations and
interfere with a consumer interest, such as post-sale use. For
example, the recent expansion of the post-sale confusion doctrine,
though consistent with consumer expectations about product
placement or sponsorship, has often prevented consumers from
realizing their interest in using trademarked goods as social
signals. This move away from consumer interests is further
evidence that courts need guidance in interpreting and shaping
consumer expectations.
The guardian ad litem could not guard against the chilling
effects of cease and desist letters because most of these cases do
not end with formal litigation. However, as cases that limit
restrictions on post-sale use of trademarked goods draw clearer
borders, the abusive recourse to those letters might lead to
imposition of liability, and thus discourage abuses. A more
proactive solution could be to require all cease and desist letters to
be sent to the United States Patent and Trademark Office as well
as to the recipient. The Trademark Office could then create a
public database similar to the Chilling Effects Clearinghouse,
except that the federal database would be mandatory. This would
subject these cease and desist letters to public scrutiny and
perhaps decrease their frequency.
V. CONCLUSION
As numerous commentators have explicated, in their
interpretation of trademark law, the courts are drifting from one of
the two aims of trademark law: consumer protection. However, my
position is that this is not, as others have argued, because courts
have failed to consider consumer interests.187 On the contrary, in
186. See supra notes 162-70 and accompanying text.
187. See, e.g., McKenna, supra note 13 (arguing that modern trademark law is produceroriented, and that this is rightly so since this is the foundation of trademark law).
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their attempt to adequately protect consumer interests and
consumers themselves from confusing uses of marks, courts have
zealously taken consumer expectations into account.188 But
consumer expectations are continually being shaped by what
consumers experience in the marketplace. The proliferation of
product placements, cease and desist letters from mark owners in
response to unauthorized post-sale uses, and overly protectionist
court decisions have all shaped consumer expectations so that
consumers now believe that virtually any post-sale use of a mark
must be authorized.189 This expectation, which courts reinforce,
prevents consumers from receiving a return on their social,
economic, and emotional investments in trademarks because they
cannot use trademarks in the post-sale environment as freely as
they would like. Courts could ameliorate the deleterious effects of
changing consumer expectations by shaping expectations in a way
that is actually beneficial to consumer interests. However, the
courts, in clinging firmly to existing consumer expectations, have
lost sight of their norm-creation role.190
Therefore, the courts need help interpreting consumer
expectations and ascertaining to what extent those expectations
should be shaped in service of the protection of consumer interests.
A consumer guardian ad litem, similar to a court-appointed expert,
would be able to advise the courts on these issues and ensure that
consumer interests are adequately protected in trademark
litigation, where consumers are simply not represented.191 A
consumer guardian ad litem would additionally help to eliminate
party bias from consumer surveys, which are often used to
determine confusion in trademark litigation.
Unless courts learn to effectively constrain and shape consumer
expectations, influencing social policy as they have done in other
areas such as public education, mark owners themselves will
continue to influence consumer expectations in accordance with
their own interests. Trademark law will then drift even further from
the protection of consumer interests toward a producer-centric
regime. If the courts continue to neglect their norm-creation role in
favor of strict adherence to existing consumer expectations,
trademark law will find itself in a position where the “public mind is
critical but the public right is minimal.”192
188. See supra Part III.A.
189. See supra Part III.B.
190. See supra notes 124-31 and accompanying text.
191. See supra Part IV.
192. Wilf, supra note 57, at 16.