Confusion Isn’t Everything
University of Minnesota Law School
Mark P. McKenna
Notre Dame Law School
December 12, 2013
Notre Dame Law Review, Vol. 89, 2013
Notre Dame Legal Studies Paper No. 1467
Minnesota Legal Studies Research Paper No. 13-56
The typical shorthand justification for trademark rights centers on avoiding consumer confusion. But in truth, this encapsulation mistakes a method for a purpose: confusion merely serves as an indicator of the underlying problems that trademark law seeks to prevent. Other areas of law accept confusion or mistake of all kinds, intervening only when those errors lead to more serious harms. Likewise, every theory of trademark rights considers confusion troubling solely because it threatens more fundamental values such as fair competition or informative communication. In other words, when it comes to the deep purposes of trademark law, confusion isn’t everything.
Yet trademark law’s structure now encourages courts to act otherwise, as if confusion itself were the ultimate evil with which trademark law is concerned and as if its optimal level were zero. Trademark adjudication increasingly fetishized confusion over the last half century while simultaneously expanding its scope to cover dramatically more situations. As a result, trademark rights conflicted more frequently with open markets and free speech. Even when special doctrines developed to protect those values, they tended to devolve back into confusion analysis. In many situations — often including examples such as trade dress, comparative advertising, or uses inexpressive works — competing values get short shrift from a framework preoccupied with eradicating confusion of any description.
This Article analyzes causes of this phenomenon, problems that result, and possible cures. It begins with a historical analysis demonstrating how the growth of confusion reasoning overwhelmed inherent limits on trademark rights that once protected competition or communication values. It then explains the resulting damage. Sometimes courts penalize socially valuable but unlicensed uses of marks; even when they probably would not find the uses infringing, the high administrative costs imposed on defendants discourage such uses. Finally, the Article proposes a better alternative. Courts should identify categories of cases implicating competition or communication values at the outset of litigation and should handle them differently than ordinary cases. Sometimes courts should simply ignore confusion when enforcing trademark rights would cause too much damage to other values. In other cases, they should distinguish between types of confusion; when balanced against important competing values, minimal or temporary confusion need not be given the same weight as outright deception that diverts trade. Our recommended approach offers stronger and earlier protection for competition and communication. It also puts confusion detection back in its proper place — not as the ultimate purpose of trademark law, but its tool.
Number of Pages in PDF File: 67
Keywords: trademark, unfair competition, fair use, first sale, exhaustion, First Amendment, Rogers, Grimaldi, functionality, defenses, confusionAccepted Paper Series
Date posted: December 15, 2013 ; Last revised: January 9, 2014
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