Testing Modern Trademark Law's Theory of Harm

55 Pages Posted: 26 Feb 2009 Last revised: 30 Dec 2010

Date Written: February 24, 2009


Modern scholarship takes a decidedly negative view of trademark law. Commentators rail against doctrinal innovations like dilution and initial interest confusion. They clamor for clearer and broader defenses. And they plead for greater First Amendment scrutiny of various applications of trademark law. But beneath all of this criticism lies overwhelming agreement that consumer confusion is harmful. This easy acceptance of the harmfulness of confusion is a problem because it operates at too high a level of generality, ignoring important differences between types of relationships about which consumers might be confused. Failure to differentiate between these different relationships has enabled trademark owners to push the boundaries of trademark protection, as they have been able to characterize virtually every use of their marks in consumer confusion terms.

This Article begins the process of distinguishing types of confusion by focusing on the supposed harms to producers from confusion regarding the source of non-competing goods. More specifically, this Article evaluates the assumptions underlying arguments in favor of protection against non-competing uses in light of the growing marketing literature regarding brand extensions and brand alliances. It demonstrates that non-competitive uses of a mark are unlikely to impact negatively the mark owner’s reputation for quality. Consumers, it turns out, are quite adept at compartmentalizing their quality expectations. At the same time, the literature provides some empirical support for the claim that third-party uses of a mark may interfere with a mark owner’s ability to expand into new product lines in the future.

Keywords: trademark, intellectual property, likelihood of confusion, sponsorship or affiliation

Suggested Citation

McKenna, Mark P., Testing Modern Trademark Law's Theory of Harm (February 24, 2009). Iowa Law Review, Vol. 95, 2009; Notre Dame Legal Studies Paper No. 09-05. Available at SSRN: https://ssrn.com/abstract=1348746

Mark P. McKenna (Contact Author)

Notre Dame Law School ( email )

P.O. Box 780
Notre Dame, IN 46556-0780
United States
(574) 631-9258 (Phone)

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