Lessons from the Trademark Use Debate

21 Pages Posted: 19 Jul 2007 Last revised: 15 Sep 2009

Graeme B. Dinwoodie

University of Oxford - Faculty of Law

Mark D. Janis

Indiana University Maurer School of Law

Abstract

In their response to our article Confusion Over Use: Contextualism in Trademark Law, Professors Dogan and Lemley discard more all-encompassing versions of the trademark use requirement. Instead, they seek to delineate and defend a "more surgical form" of trademark use doctrine. In this reply, we demonstrate that the language of the Lanham Act does not impose a trademark use requirement even when that requirement is defined "surgically" and sections 32 and 43(a) are read "fluidly," as Dogan and Lemley suggest. Moreover, their interpretation still renders section 33(b)(4) redundant and unduly limits appropriate common law development of trademark law. We also address Dogan and Lemley's additional normative arguments for deploying trademark use to shield defendants from even potential liability for various commercial uses of marks, especially in connection with online contextual advertising. We disagree that contributory infringement doctrine necessarily provides sufficient oversight of the presentation of search results or advertising sales practices; that marginalizing trademark law will best encourage intermediaries to structure their business arrangements in ways that promote reliable information flow; and that offline analogies should necessarily direct the outcomes of trademark disputes over online practices. Our disagreements with Dogan and Lemley on these points also highlight broader differences about methodological approaches to trademark law. In particular, our distaste for limiting the potential scope of the Lanham Act reveals our greater willingness to see trademark and unfair competition law as a market regulator. Relatedly, we are more firmly committed to judicial development of both potential liability and potential defenses; Dogan and Lemley want courts to focus only on the latter.

Keywords: Information Intermediaries, Internet, Trademark Law, Use

Suggested Citation

Dinwoodie, Graeme B. and Janis, Mark D., Lessons from the Trademark Use Debate. Iowa Law Review, Vol. 92, p. 1703, 2007; Chicago-Kent Intellectual Property, Science & Technology Research Paper No. 08-001; U Iowa Legal Studies Research Paper No. 07-23. Available at SSRN: https://ssrn.com/abstract=1001130

Graeme B. Dinwoodie (Contact Author)

University of Oxford - Faculty of Law ( email )

St. Cross Building
St. Cross Road
Oxford, OX1 3UJ
United Kingdom

Mark David Janis

Indiana University Maurer School of Law ( email )

211 S. Indiana Avenue
Bloomington, IN 47405
United States

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