Confusion Over Use: Contextualism in Trademark Law

72 Pages Posted: 5 Sep 2006  

Graeme B. Dinwoodie

University of Oxford - Faculty of Law

Mark D. Janis

Indiana University Maurer School of Law

Abstract

This paper tackles an intellectual property theory that many scholars regard as fundamental to future policy debates over the scope of trademark protection: the trademark use theory. We argue that trademark use theory is flawed and should be rejected. The adoption of trademark use theory has immediate practical implications for disputes about the use of trademarks in online advertising, merchandising, and product design, and has long-term consequences for other trademark generally. We critique the theory both descriptively and prescriptively. We argue that trademark use theory over-extends the search costs rationale for the trademark system, and that it unhelpfully elevates formalism over contextual analysis in trademark law rulemaking. The theory seeks determinate trademark rules in order to encourage a climate of certainty for innovators, but the concepts on which it is founded are likely to degenerate. We show that trademark use theorists ignores the multivalence of trademark law, and that adopting trademark use doctrines would result in less transparent trademark decisionmaking. Instead, we propose that trademark law retain its traditional preference for contextual analysis. We show in particular how a contextual analysis would offer an approach to trademark disputes involving online advertising that better captures the potential of trademark law to police new information markets. Our analysis contemplates individualized assessments according to common law standards, but opens up policy space for the development of limited statutory safe harbors for intermediaries such as search engines.

Keywords: Information Intermediaries, Internet, Trademark Law, Use

Suggested Citation

Dinwoodie, Graeme B. and Janis, Mark D., Confusion Over Use: Contextualism in Trademark Law. Iowa Law Review, Vol. 92, No. 1597, 2007; U Iowa Legal Studies Research Paper No. 06-06. Available at SSRN: https://ssrn.com/abstract=927996

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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