Dividing Trademark Use

Abstract

The trademark law of the United States places special emphasis on whether and how a trademark is used in commerce. But over the long history of the Lanham Act--including some less-than-careful drafting by Congress and some aggressive acts of interpretation by the federal courts--the concept of "use" has become complicated and in many ways confused. Two recent Supreme Court cases--Jack Daniel's Properties, Inc. v. VIP Products LLC and Abitron Austria GmbH v. Hetronic International, Inc.--reflect and in some ways exacerbate that confusion. But the opinions in these cases also expose an interesting property of "use" in trademark law that has not been deeply examined in the caselaw or the academic literature. That property is that the use of a trademark can be divided among multiple agents with respect to a single product or service. The potential for divided use raises issues of secondary responsibility that trademark law has never comprehensively addressed. This Article catalogues the various notions of "use" in trademark law, shows how Jack Daniel's and Abitron destabilize these notions, and applies principles of secondary responsibility to attempt to reconcile those cases with other contentious areas of trademark doctrine under the framework of divided use.

Keywords: trademark, unfair competition, secondary liability, tort, contributory liability, vicarious liability