A Cause of Action for 'Passing Off/Associational Marketing'

Abstract:     
This Essay was inspired by discussions at a recent Trademark Scholars Roundtable, addressed to defenses and limitations to the trademark infringement cause of action. In the Essay I combine some of my own ideas with points and suggestions made by the other Roundtable participants, to sketch out a possible judicial approach to regulating modern expansion of trademark owners’ rights over words and symbols.

After discussing the expansion and the problems it poses, I suggest classifying four particularly problematic new categories of trademark infringement claims as “passing off/associational marketing” claims, to be evaluated not as trademark infringement but as a form of “residual passing off” claim. The Essay grounds “residual passing off” causes of action in the common law and the Lanham Act, and notes the tradition of subjecting such claims to more rigorous limitations and defenses (such as a materiality requirement) that have not generally been applied to cases of trademark infringement. The last section of the Essay discusses a number of presumptions, defenses and other limitations that might appropriately be applied in evaluating “passing off/associational marketing” claims, to ensure a proper balance of the competing interests of avoiding marketplace confusion and maintaining marketplace competition and protecting First Amendment interests.

Number of Pages in PDF File: 23

Keywords: trademark, passing off, unfair competition, materiality, associational marketing

Accepted Paper Series