Citations (2)


Footnotes (125)



Grounding Trademark Law Through Trademark Use

Mark A. Lemley

Stanford Law School

Stacey L. Dogan

Boston University - School of Law

Iowa Law Review, Vol. 92, 2007
Stanford Public Law Working Paper No. 961470

The debate over trademark use has become a hot-button issue in intellectual property (IP) law. In Confusion over Use: Contextualism in Trademark Law, Graeme Dinwoodie and Mark Janis characterize it as a dispute over whether to limit trademark holder rights in a new and unanticipated way. Yet there is another - in our view more historically accurate - way to frame the trademark use debate: the question is whether courts should, absent specific statutory authorization, allow trademark holders to assert a new and unprecedented form of trademark infringement claim. The pop-up and keyword cases involve attempts to impose third-party liability under the guise of direct infringement suits. Dinwoodie and Janis's thorough account notwithstanding, it remains the fact that, before the recent spate of Internet-related cases, no court had ever recognized a trademark claim of the sort that trademark holders are now asserting. Trademark infringement suits have always involved allegations of infringement by parties who use marks in connection with the promotion of their own goods and services. The question raised by the trademark use cases, as we view it, is whether courts should countenance a radical departure from that traditional model without specific instruction from Congress. We think they should not.

In this paper, we explain the origins of trademark use doctrine in traditional limits on the scope of the trademark right and in the distinction between direct and contributory infringement. We also explain why we cannot simply rely on the likelihood of consumer confusion test to solve the problems the trademark use doctrine addresses, and we examine the difficult problem of defining the scope of the trademark use doctrine.

Number of Pages in PDF File: 34

Open PDF in Browser Download This Paper

Date posted: March 1, 2007 ; Last revised: March 4, 2008

Suggested Citation

Lemley, Mark A. and Dogan, Stacey L., Grounding Trademark Law Through Trademark Use. Iowa Law Review, Vol. 92, 2007; Stanford Public Law Working Paper No. 961470. Available at SSRN: https://ssrn.com/abstract=961470

Contact Information

Mark A. Lemley (Contact Author)
Stanford Law School ( email )
559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

Stacey L. Dogan
Boston University - School of Law ( email )
765 Commonwealth Avenue
Boston, MA 02215
United States
Feedback to SSRN

Paper statistics
Abstract Views: 7,164
Downloads: 1,391
Download Rank: 9,624
Citations:  2
Footnotes:  125
Paper comments
No comments have been made on this paper