Trademark Law & Consumer Safety
67 Pages Posted: 26 Jan 2020 Last revised: 5 Aug 2020
Date Written: January 10, 2020
Trademark law protects consumers and mark owners against economic harm. When consumers are confused about the source of a good or service, this increases consumer search costs or imposes reputational costs on trademark owners. But what happens when a pharmacist, confused by two similar drug names, accidentally prescribes estrogen instead of an antidepressant? Trademark law, in such cases, has adapted its core doctrine—likelihood of confusion—to protect the public from another kind of injury: physical harm. By lowering the standard required for confusion when physical harm could result, courts recognized that standard trademark analysis did not always capture the harms posed by various kinds of confusion. In this Article I argue that courts should, for similar reasons, adjust the standard for deceptiveness. When a mark’s potential to mislead consumers about the nature of the product poses a risk to the consumer’s physical safety, courts should lower the standard for finding the mark deceptive.
Current law bars from registration “deceptive” trademarks—trademarks that influence consumer purchasing decisions by misdescribing the nature, quality, or characteristics of the good on which the mark appears. The test for determining whether a mark is deceptive, however, is too rigid. To make matters worse, under current doctrine all deceptive marks are treated as equally harmful. Yet not all deceptive marks pose the same quantity or quality of harm. Sometimes the (risk of) harm is only economic or has only economic effects. A customer who receives SPUNOUT ICE CREAM may erroneously think that the ice cream was produced by a special spinning process, and they may buy it for that reason. In other cases, however, the risk of harm may implicate more serious considerations, such as physical safety. A consumer who buys the dietary supplement BRAINSTRONG because it suggests, without evidence, that it will improve brain function faces a variety of potential physical effects—effects not experienced by the patron of ice cream. Risks posed by misleading marks, in other words, vary by the type of good on which they appear. Where a good or service implicates serious concern of physical harm, courts should, as they have in the confusion context, pay closer attention. This requires three modest changes. First, courts should evaluate as potentially deceptive marks that suggest, but do not describe, a product’s qualities, characteristics, functions, features, or effects. Second, courts should be willing to find marks deceptive even when the deception is material to the purchasing decisions of only a small number of consumers. Finally, courts should bar deceptive marks from trademark protection. These changes will discourage the use of misleading marks, increase the quality of consumer information, and reduce the risk of physical harm.
Comments, suggestions, and revisions welcome. Please send them to david [dot] alan [dot] simon [at] post.harvard.edu.
Keywords: trademark, intellectual property, consumer safety, FTC, FDA, drugs, supplemements
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