Vol. 101 TMR 1319 - International Trademark Association 101/vol101_no4_a6.pdf · Vol. 101 TMR 1319...

Vol. 101 TMR 1319

EDITOR’S NOTE

The Trademark Reporter is pleased to publish in this issue one of the articles that won the Ladas Memorial Award. Michael A. Johnson, a recent graduate of Vanderbilt University Law School, was the winner of the 2010-2011 Student Award. His article follows this page.

Anthony Fletcher, a senior principal at Fish & Richardson, New York, NY, was the winner of the 2010-2011 Professional Award. His article, “The Product with the Parody Trademark: What’s Wrong with CHEWY VUITON?” was published at 100 TMR 1091 (2010).

The writing competition was established in tribute to the distinguished practitioner and author Stephen P. Ladas. The Ladas Memorial Award is given to the best paper on the subject of trademark law or a matter that directly relates to or affects trademarks.

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THE WANING CONSUMER PROTECTION RATIONALE OF TRADEMARK LAW:

OVERPROTECTIVE COURTS AND THE PATH TO STIFLING POST-SALE CONSUMER USE

By Michael A. Johnson∗

I. INTRODUCTION In what has become a rather notorious example, in 2006 the

Emerson Electric Company filed suit against NBC Universal Television Studios (NBC), alleging, among other things, infringement of its trademark IN SINK ERATOR for garbage disposals.1 Emerson claimed that NBC, without the consent of Emerson, used the IN SINK ERATOR trademark in the pilot episode of a television show called Heroes. In particular, Emerson took issue with a scene in which a young woman put her hand in a garbage disposal bearing the IN SINK ERATOR trademark, causing injury.2 NBC did not believe the suit had merit, but still settled the case and pixilated the trademark in subsequent airings and in the DVD version.3 Curt King, spokesman for NBC, stated, “While we do not believe there is any legal issue with the episode as originally broadcast, we nonetheless have decided to edit the episode for future uses . . . .”4

Trademark users such as NBC have received cease and desist letters even in cases where there is no possible way to communicate an idea except through the trademark itself.5 For instance, a company sent a cease and desist letter to one of its own authorized re-sellers warning the re-seller to change its website name because the mark owner thought the site name was too confusing.6 This was the case even though the authorized re-seller ∗ J.D., Vanderbilt University Law School. Associate at Kay, Griffin, Enkema & Colbert, PLLC in Nashville, Tennessee. I would like to thank Professor Daniel J. Gervais for his invaluable guidance and insight in forming a topic and throughout the writing and editing process, as well as my colleagues Gene Endress, Jared Gardner, Dan Hyndman, and Theresa Weisenberger.

1. Emerson Elec. Co. v. NBC Universal Television Studios Inc., 06-cv-01454 (E.D. Mo. Oct. 2, 2006).

2. Id. 3. Matthew Belloni, Hand Mangling on NBC’s ‘Heroes’ Leads to Trademark Claim, Allbusiness, Oct. 5, 2006, http://www.allbusiness.com/services/legal-services/4466012-1.html.

4. Id.

5. The fact that there is no alternative means of communication could raise First Amendment concerns. See infra notes 154-57 and accompanying text.

6. See Letter from Guntersville Breathables to Kentucky Hot Brown (July 23, 2004), available at http://www.chillingeffects.org/domain/notice.cgi?NoticeID=1368.

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had validly purchased the goods and the site clearly sold used goods.7

Chilling Effects Clearinghouse, a joint project of various law schools, is a website dedicated to cataloging cease and desist letters like the one Emerson sent to NBC. As of the date of this writing, Chilling Effects Clearinghouse has collected more than 36,568 letters related to intellectual property law and the First Amendment.8 Most of these letters chill post-sale use of trademarks whether or not the sender’s legal claims have merit because their aim is to silence users or prevent use of a trademarked good the consumer owns, thus seriously curtailing the user’s property rights.9 Unfortunately, the confused state of modern trademark law tends to prolong litigation when the matter ends up in court, thus increasing both costs and risks, and encouraging the recipients of these letters to simply comply with the request rather than fight for the right to speak using trademarked goods, terms, or symbols.10

Even NBC did not try to vindicate its interest in post-sale use. It is not that courts do not care about consumer protection or free speech. On the contrary, some might say that courts have been too aggressive in their consumer protection efforts, which is creating a backlash against consumer interests.11 NBC purchased the IN SINK ERATOR garbage disposal just as any other consumer would. Then, Emerson sought to control the way in which NBC used the trademarked good. There is no dearth of similar cases—exemplified by the wealth of cease and desist letters—which are fundamentally changing consumer expectations, slowly but steadily generating a chilling belief that any post-sale use of a trademark (especially a public use) must be authorized by the trademark owner. This belief has, in turn, prompted a number of courts to conclude that a consumer would actually be confused by NBC’s use of IN SINK ERATOR: many consumers would think that the use needed to be approved and therefore might think the use actually was approved or sponsored in some way by the makers of IN SINK ERATOR garbage disposals. This is a truly disturbing development that has powerful implications for consumer protection efforts in modern trademark doctrine, and beyond that, for free speech and the scope of ownership rights in goods bearing trademarks—that is, basically any and all goods sold today. As cases like the above change consumer expectations, 7. Id.

8. Chilling Effects Clearinghouse, Index of Notices, http://www.chillingeffects.org/ notice.cgi (last visited July 21, 2011).

9. Id.

10. See generally William McGeveran, Rethinking Trademark Fair Use, 94 Iowa L. Rev. 49 (2008). 11. See infra Part III.B.

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confusion and other trademark doctrines expand and have begun to drastically impede consumer interests, specifically the ability to use a trademarked good post-sale.12

The traditional justification for trademark law is the protection of both consumers and trademark owners.13 The Senate Committee on Patents described trademark law as both “protecting the public so that it may be confident that, in purchasing a product . . . it will get the product which it asks for and wants to get,” and protecting a trademark owner’s expenditure of “energy, time, and money in presenting to the public the product . . . from . . . misappropriation by pirates and cheats.”14 Despite this putative two-fold aim of trademark law, consumers are often relegated to the sidelines in trademark litigation. The typical parties to a trademark dispute are the trademark owner and an alleged infringer, both of which lack incentive to raise or protect consumer interests because this would only reduce that party’s control over the litigation.

Commentators have criticized a variety of modern doctrinal innovations on the ground they are not motivated by concerns for consumer protection.15 Dilution and confusion are the two most commonly targeted examples.16 “These critics almost universally characterize modern doctrines as indicative of a shift in trademark law away from confusion-based protection and towards a property-based regime that is focused only superficially on consumers.”17 Mark McKenna has argued that such property-focused doctrine is nothing new, and is in fact the foundation of trademark law.18

12. See infra Part III.A.

13. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839, 1857 (2007), reprinted in 97 TMR 1126 (2007); Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 Emory L.J. 461, 466-69 (2005) (explaining that the purpose of trademark law is to facilitate the flow of truthful information and reduce consumer search costs, thereby encouraging producers to make quality goods); see generally 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2:1 (4th ed. 2007).

14. S. Rep. No. 79-1333, at 3 (1946).

15. See, e.g., McKenna, supra note 13.

16. See, e.g., Wendy J. Gordon, Introduction, Ralph Sharp Brown, Intellectual Property, and the Public Interest, 108 Yale L.J. 1611, 1614 n.19, 1615 (1999) (calling dilution a “disaster”); Mark A. Lemley & Mark McKenna, Irrelevant Confusion, 62 Stan. L. Rev. 413, 414-15 (2010) (arguing that trademark law should focus its attention on confusion that is actually relevant to consumer purchasing decisions).

17. McKenna, supra note 13, at 1846-47.

18. See generally id. at 1848 (“American trademark law was unapologetically producer-oriented. Trademark law, indeed all of unfair competition law, was designed to promote commercial morality and protect producers from illegitimate attempts to divert their trade. Consumer confusion was relevant to the traditional determination of infringement not for its own sake, but because deceiving consumers was a particularly effective way of stealing a competitor’s trade. . . . Trademark law primarily sought to regulate the relationship between competitors; any benefits to consumers were secondary.”).

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Accordingly, McKenna asserts, “critics delude themselves when they seek to limit trademark law by tying protection to consumer expectations.”19 However, the fact remains that, contrary to what other commentators have claimed, both courts and Congress have shown a steadily increasing interest in consumer protection, expanding various branches of the confusion doctrine to encompass certain consumer uses.20

If the courts and legislatures have exhibited such a strong move toward consumer protection, why, as various commentators have observed,21 does trademark law seem to be drifting away from consumer protection? The answer—though not the blame—lies in consumers themselves. Consumer expectations shape trademark law.22 Nowhere is this truer than in the area of confusion. Under the confusion doctrine, a court must decide whether a reasonable consumer would be confused about the origin of the particular good bearing the trademark.23 This “reasonable consumer” standard naturally changes as consumer expectations shift in response to market forces. The result is a somewhat circular model where consumer expectations change the law and the law, ideally, changes consumer expectations.24 The danger is that this feedback loop will inform the definitions of likelihood of confusion in ways that, although perhaps consistent with current consumer expectations, may actually be inconsistent with broader, normative consumer interests as courts patronize consumers, protecting them from fringe forms of confusion.

This drift away from consumer protection is not because courts have failed to consider consumer interests, as others have argued.25 On the contrary, for many years courts have actually overprotected consumers from confusion through fringe doctrines such as post-sale confusion.26 My suggestion is that this overprotection—together with mark owners’ responses to it through cease and desist letters and litigation—has fundamentally 19. Id.

20. See infra notes 46-48, 100-11 and accompanying text.

21. See, e.g., McKenna, supra note 13.

22. See infra Part II.

23. See generally 5-5 Gilson on Trademarks § 5.02 (2010); see also Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 646 (6th Cir. 2002) (holding that “evidence of actual [consumer] confusion” is one of eight factors to be weighed when determining likelihood of confusion); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) (same); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (same); Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (same).

24. See infra Part III.B.

25. See, e.g., McKenna, supra note 13 (arguing that modern trademark law is producer-oriented, and rightly so because this is the foundation of trademark law).

26. See infra Part III.A; see generally Lemley & McKenna, supra note 16 (arguing that courts have expanded the concept of confusion too far).

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changed consumer expectations, and has, in turn, reduced consumers’ ability to use trademarked goods and symbols by increasing the likelihood that consumers will expect that the use of any trademarked good in any commercial context is based on sponsorship or affiliation with the trademark owner. The exponential development of product placement in motion pictures and television programs is liable to increase this perception.27 This is arguably just what mark owners want; as this consumer expectation spreads, courts and Congress begin to legitimize this belief and expand protection for famous marks in accordance with the “reasonable consumer” of the confusion test.28 Such overprotection is as dangerous as not protecting trademarks at all because “[o]verprotection stifles the very creative forces it’s supposed to nurture.”29 Shifting consumer expectations may thus result in the perilous overprotection of trademark owners. Though initially guided by the normative light of consumer protection, the cases that broaden likelihood of confusion—such as those that encompass relative utility30—are shifting the outcomes of litigation away from consumer protection by curtailing post-sale use. This article thus seeks to answer to an often-debated question: should trademark law merely reflect social norms, or should it seek to create them?

Courts can still remedy this shift away from consumer protection by shaping consumer expectations in a way that is actually beneficial to consumer interests. However, because actual consumer expectations are difficult to divine from often biased party-gathered surveys,31 courts need assistance in balancing these considerations. The parties to trademark litigation are of little help in this regard. They typically advocate for consumer interests only to the extent that it is beneficial to their own position, and their definition of consumer interests may be more rhetorical volleys than empirically demonstrable assertions. Therefore, I propose the addition of a third party to trademark litigation—a guardian ad litem of sorts—who would conduct surveys, advocate for consumers more generally, and advise the court of relevant consumer interests and how to shape consumer expectations in a way that will protect those interests. 27. See infra Part III.B.

28. See infra Part III; see also Alexandra J. Roberts, New-School Trademark Dilution: Famous Among the Juvenile Consuming Public, 49 IDEA 579, 579 (2009), reprinted in 100 TMR 1021 (2010) (discussing the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c), which increases protection of famous marks, and thus “strengthens incentives for mark-owners to ensure their logos and brand names are well-recognized”).

29. Keith Aoki, How The World Dreams Itself to be American: Reflections on the Relationship Between the Expanding Scope of Trademark Protection and Free Speech Norms, 17 Loy. L.A. Ent. L. Rev. 523, 532 (1997).

30. See infra Part III.A.

31. See infra Part IV.

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This article will proceed in five parts. In Part II, I will discuss the consumer interests and investments in trademarks. Part II will focus in particular on social signaling and the role it has played and continues to play in broadening consumer expectations about post-sale trademark use. Part III will demonstrate how trademark doctrine has drifted from consumer protection considerations, and will attempt to elucidate the cause of this shift. In Part IV, I propose the addition of a third party to trademark litigation to help courts ascertain current consumer expectations and effectively balance those expectations against broader, normative consumer interests. Part V will present concluding remarks.

II. CONSUMER INTERESTS AND INVESTMENT IN TRADEMARKS

Consumers have social, emotional, and financial interests and investments in trademarks. As an initial matter, it is essential to keep in mind the difference between consumer interests and consumer expectations. Consumer interests are an essential normative consideration in trademark law. This holds true regardless of what consumers expect. However, consumer expectations are what courts look to as a test to determine whether a particular use of a mark is confusing.32 Consumer expectations change in response to market forces, social norms, and a host of other factors. My contention is that if courts are not careful in how they consider such shifts in expectations, these changes will not be consistent with consumer interests. Therefore, as courts seek to protect consumers—one of the primary goals of trademark law—they must find a balance between guarding consumer interests and bowing to shifting consumer expectations.

A. Social Investment

Many consumers value a particular trademark because of what owning or displaying that mark may communicate to the general public in the post-sale environment. In this way, trademarks function as part of the construction of our public personas, even our sense of “self.”33 It is generally accepted that “[a]dvertising is a way for companies to communicate with individuals, but logos are a way for people to communicate with each other.”34 This signaling function is the “relative utility” of the

32. See, e.g., Polaroid, 287 F.2d at 495 (holding that “evidence of actual [consumer] confusion” is one of eight factors to be weighed when determining likelihood of confusion).

33. See infra Part II.B.

34. Daniel E. Newman, Portraying a Branded World, 2008 U. Ill. J. L. Tech. & Pol’y 357, 364 (2008).

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trademark. The “absolute utility” is the functional characteristics of the good bearing the trademark. For example, according to a 2007 survey, 57 percent of TOYOTA PRIUS automobile owners indicated that their primary motivation for buying the PRIUS was relative utility, stating that it “makes a statement about me,” while only 36 percent said their primary motivation was absolute utility (that is, “higher fuel economy”).35

Thorstein Veblen called such purchases made for the purpose of relative utility “conspicuous consumption.”36 These so-called Veblen goods “include[] almost any form of purchase where a person pays extra because other people connote high-status or wealth with the product.”37 As Veblen stated, “Since the consumption of these more excellent goods is an evidence of wealth, it becomes honorific; and conversely, the failure to consume in due quantity and quality becomes a mark of inferiority and demerit.”38 A common product can be a Veblen good as long as it communicates information about the consumer’s status or wealth.39 A Veblen good can also hold relative utility as a result of its rarity. These goods fall into the “snob effect” category, which describes the relative utility one derives from a product as a result of that product’s ability to display exclusive or expensive tastes.40 “The snob effect value of a product is almost inversely related to its popularity, and can be divorced from price as long as quantities are limited.”41

At first blush, it does not seem consumer protection is served at all by the protection of relative utility. When a court vindicates a trademark owner’s right to enforce relative utility and thus preserves the sumptuary order, the court is not preventing consumer confusion about the trademark itself, but rather is preventing the confusion of a nonpurchaser about the status of the person who purchased the trademarked good. However, such confusion may eventually or tangentially affect the purchasing decision of a consumer who desires the relative utility such a trademark may provide, and therefore consumer interests are certainly served by the protection of relative utility.

35. Micheline Maynard, Say “Hybrid” and Many People Will Hear “Prius”, N.Y. Times, July 4, 2007, at A-1.

36. Thorstein Veblen, The Theory of the Leisure Class: An Economic Study of Institutions 74 (MacMillan Co. 1912) (1899).

37. Newman, supra note 34, at 362.

38. Veblen, supra note 36, at 74.


40. H. Liebenstein, Bandwagon, Snob, and Veblen Effects in the Theory of Consumers’ Demand, 64 Q. J. Econ. 183, 189 (1950) (analyzing the demand curves for Veblen and snob goods). 41. Newman, supra note 34, at 362.

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Protection of relative utility is essential to the protection of consumer interests because

in our consumer culture people do not define themselves according to sociological constructs. They do so in terms of the activities, objects, and relationships that give their lives meaning. It is the objects, and consumer goods above all, that substantiate their place in the social world. It is through objects that they relate to others.42

Some trademarks that once indicated only source or quality are now indicators of the “status, preferences, and aspirations of those who use them. Some trademarks have worked their way into the English language; others provide bases for vibrant, evocative metaphors.”43 In many cases, there is no replacement for the metaphoric power of a trademark. Consider, for example, the phrases, “it’s the Rolls Royce of its class” or the “it is the Cadillac of minivans”;44 these ideas are difficult to express effectively any other way.45

Moreover, modern trademark law certainly protects relative utility and helps prevent post-sale, non-consumer confusion. The original version of Section 32(1) of the Lanham Act covered only instances in which an infringing use would cause confusion among “‘purchasers as to the source of origin of . . . goods or services.’”46 In 1962, Congress amended Section 32(1) and removed the limitation of the Act’s application to purchasers only.47 On the other hand, one could argue that courts are preventing consumer confusion indirectly through the prevention of such non-consumer confusion because when unauthorized copies—or other similar confusing uses—of a Veblen good become prevalent, it decreases the signaling function and “snob effect” of the trademark, in which both the trademark owner and consumers have invested to create this relative utility. Then, in 1996, Congress amended the Trademark Act of 1946 through the Federal Trademark Dilution Act, which expressly eliminated the need to show that the use of a mark had resulted in confusion or that there was competition between two marks, shifting the focus away from consumers and

42. John Schouten & James H. McAlexander, Subcultures of Consumption: An Ethnography of the New Bikers, 22 J. Consumer Res. 43, 59 (1995).

43. Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 965 (1993).

44. This is a quote from the 1995 film Get Shorty (Metro-Goldwyn-Mayer).

45. Id. at 973.

46. David M. Tichane, The Maturing Trademark Doctrine of Post-Sales Confusion, 85 TMR 399, 401 (1995) (emphasis added).

47. U.S. Trademark (Lanham) Act, Pub. L. No. 87-772, § 17, 76 Stat. 769, 773-74 (1962) (codified as amended at 15 U.S.C. § 1114 (2006)).

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onto the mark itself.48 This protection of the distinctive quality of the mark itself is another example of protection of the signaling function of famous marks, which is arguably desired by consumers.

Because relative utility is important to consumers and mark owners alike, it is reasonable for courts to protect it as a consumer interest in accordance with the purposes of trademark law. Jeffrey Harrison argues that trademark law’s protection of relative utility is a morally and socially impermissible form of government subsidization of status signaling. Harrison asserts that the reason for this shift from protecting the consumer from confusion and decreasing transaction costs to protecting social status signaling “akin to tattoos and piercings for the relatively well-to-do” is unclear.49 Harrison claims that this judicial expansion of post-sale confusion merely preserves the vanity of the minority at the expense of the majority.50 “In the end,” he reasons, “subsidized status signaling cannot be reconciled with any moral philosophy. . . . The same values that favor limited government are very unlikely to support taking, through taxation, from some to subsidize those engaged in status-signaling speech or those who gain commercially by marketing status-signaling products.”51 However, Harrison’s argument overlooks two significant consumer protection points: (1) status signaling is not limited to the wealthy; and (2) Harrison fails to consider the very real possibility that consumers want such government subsidization of relative utility—arguably the majority of consumers desire whatever status signaling they can afford.

Similarly, Barton Beebe has argued that relative utility is an increasingly relevant justification for modern intellectual property because trademark and other intellectual property law is now used “to conserve . . . our system of consumption-based social distinction and the social structures and norms based upon it.”52 Beebe

48. Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985, 985-86 (1996) (repealed by the Trademark Dilution Revision Act of 2006, codified as amended at 15 U.S.C. § 1125(c)(1)); see also Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687 (1999) (discussing how a prima facie case of dilution does not require a showing of consumer confusion); see also Roberts, supra note 28, at 579 (discussing the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c), which increases protection of famous marks, and thus “strengthens incentives for mark-owners to ensure their logos and brand names are well-recognized”). 49. Jeffrey L. Harrison, Trademark Law and Status Signaling: Tattoos for the Privileged, 59 Fla. L. Rev. 195, 227 (2007). I contend that the reason for this shift to protection of social status signaling is because this is an interest that consumers have come to expect. See infra Part III.C.

50. Harrison, supra note 49, at 227.

51. Id. at 226.

52. Barton Beebe, Intellectual Property Law & the Sumptuary Code, 23 Harv. L. Rev. 809, 814 (2010); see also Harrison, supra note 49, at 196 (arguing that trademark law is a form of government subsidization for signaling wealth and status); Malla Pollack, Your Image Is My Image: When Advertising Dedicates Trademarks to the Public Domain—with

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ultimately claims that this preservation of the sumptuary code53 is undesirable because in such a system both consumers and producers expend resources to acquire some intangible and “meaningless” relative utility in a particular mark.54 These resources, Beebe claims, would be better spent on absolute utility in a modern system where copying of trademarked goods is prevalent and such copies are often indistinguishable from an original.55

The notion that the societal costs expended in the pursuit of relative utility would be better spent on absolute utility is specious. Although one could envision a world where absolute utility is the only relevant consideration to purchasing decisions, this simply does not map onto actual uses of trademarks. In fact, without relative utility, trademark law would be largely irrelevant, apart from what little information a consumer could garner about a particular good’s absolute utility based on the trademark. Producers would have little incentive to invest in a mark; advertising and social classes, whether desirable or not, would be eliminated. Relative utility has always been and will continue to be relevant, and a world with only absolute utility is antithetical to a trademark system. Therefore, in trademark law both relative and absolute utility are directly relevant consumer interests, and courts must consider both in determining the scope of trademark protection.56

Trademarks owners are predictably happy to ride this social signaling wave and shift to protection of relative utility. In response to the burgeoning consumer interest in the social signaling function of marks, owners increasingly market their brands as lifestyle signals (for example, the TOYOTA PRIUS automobile). However, marks cannot attain relative utility without consumer investment in the mark, which is often generated outside formal advertising or trademark-sponsored messaging. an Example from the Trademark Counterfeiting Act of 1984, 14 Cardozo L. Rev. 1391 (1993) (providing a detailed explanation of the psychology of consumer identification with goods and clothing). Pollack traces the trend of social signaling through one’s clothes to sumptuary laws that were enforced in classic Rome and medieval England in order to preserve caste distinctions. Id. at 1422-27.

53. The sumptuary code is historically a way to enforce social classes and hierarchy. See Beebe, supra note 52, at 810. This has often been accomplished through the use of regulations that restrict the use of distinctive styles or goods that identify the particular society’s upper class. See id. at 810-13.

54. Id. at 882.

55. Id. Beebe uses the example of copies of LOUIS VUITTON bags, of which copies and originals are often indistinguishable, and thus the relative utility or signaling function decreases as the bags become more prevalent. See id.

56. Nonetheless, courts must weigh this expansion of trademark law to protect relative utility against the resulting encroachment on uses of the same mark in other contexts, including by other consumers. As discussed in Part IV infra, a third-party neutral could assist the court in weighing and effectively countering these concerns.

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Indeed, the consumer role is essential because, when they choose to, consumers make a significant social investment in trademarks as they invest a mark with meaning—including relative utility—far beyond that which is assigned by the trademark owner.57 In this way, consumers hold ultimate power over any given brand.58 Put differently, consumers invest trademarks with societal meaning in a way that trademark owners cannot because “the collective personality of culture” contributes significantly, and in some cases exclusively, to the meaning of a trademark59—especially its relative utility. The consumer becomes an ad hoc “author or symbolic creator” together with the trademark owner.60 In fact, as easily as consumers are able to invest a trademark with meaning, they can divest it of the same.61 For example, ASPIRIN, CELLOPHANE, THERMOS, and various other trademarks all lost their distinctiveness, and consequently also lost the protections of trademark law, as consumers began to use these marks as generic terms.62

Especially in a world of Facebook and Twitter, societal meaning and relative utility is communicated more through word of mouth than through traditional advertising campaigns. It is well known in the advertising world that “[w]ord of mouth is more powerful than advertising in selling—or killing—products.”63 Consumer reviews, whether positive or negative, affect consumer perceptions of both relative and absolute utility.64 For example, “[i]t is possible to convince people that they liked a product that they specifically said they disliked by showing them positive reviews (or vice versa, turning positive opinions negative).”65 In 57. Steven Wilf, Who Authors Trademarks?, 17 Cardozo Arts & Ent. L.J. 1, 15 (1999).

58. See, e.g., Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science, 86 Tex. L. Rev. 507, 551–52 (2008).

59. Wilf, supra note 57, at 4-5.

60. Id. at 2-3. Wilf argues that this “act of collective labor establishes a stake to trademark symbolism contemporaneous with any private claims” and that therefore “perhaps the same authorial rights granted to individual creators (such as the person or corporation that affixes signs upon consumer goods) can be attributed to the public as well.” Id. Although I believe granting ownership rights to consumers is a risky proposal and would shift the focus of trademark law too far away from producer protection, Wilf’s position further illustrates the power consumers have over trademarks.

61. Id. at 39-40. 62. King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963) (THERMOS); DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir. 1936) (CELLOPHANE); Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (ASPIRIN).

63. Tushnet, supra note 58, at 551. Advertising companies have taken note of this, as evidenced by the growing number of celebrity Twitter endorsements that appear to be voluntary but are actually paid endorsements. See Inside Edition–Celebs Tweeting for Big Bucks, Inside Edition, http://www.insideedition.com/storyprint/3993/celebs-tweeting-for-big-bucks.aspx (last visited Dec. 15, 2010).

64. Tushnet, supra note 58, at 551. 65. Id. at 551-52.

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this way, a trademark can achieve the meaning the mark owner desires only when consumers embrace the meaning (or at least acquiesce to it). Trademark owners therefore have an incentive to produce high-quality goods and services (absolute utility) in order to build the arguably more essential consumer interest of relative utility.66 This is especially true because dissatisfied customers recount their negative experiences far more frequently than a satisfied customer communicates his or her positive experience.67

Consumers’ societal investment and public authorship of trademarks is especially evident in the concept of secondary meaning. In the case of a descriptive mark, a producer will first affix the mark to a product. Then, if, and only if, the public associates the mark with the product, the mark achieves secondary meaning.68 Hence, a descriptive mark that has achieved secondary meaning was imbued with such meaning through “public association of a pre-existing word and an already owned object.”69 Interestingly, this conception, when viewed from a Lockean natural rights viewpoint, could vest an ownership interest in consumers: “Descriptive marks borrow heavily from the linguistic commons and require public recognition through secondary meaning before warranting commercial protection.”70 Thus, based on Locke’s natural rights theory, the public may actually be entitled to use the descriptive mark that has achieved secondary meaning outside its commercial context.71

B. Emotional Investment

In addition to the aforementioned objective signaling function, consumers value trademarks because of their subjective, emotional

66. To complicate matters a bit more, while “quality” may sound as an objective fact, and it may be in some cases (for example, when a consumer magazine tests various products), in fact quality itself is mostly the result of perceptions. See Daniel Gervais, Reinventing Lisbon: The Case for a Protocol to the Lisbon Agreement (Geographical Indications), 11 Chi. J. Int’l L. 67, 111 (2010) (“[Q]uality is not limited to testing a product against a strict technical standard in a mass production context. It is, [. . .] the ‘totality of features and characteristics of a product or service that bears its ability to satisfy stated or implied needs.’ Those ‘needs’ may be reflected in the exotic nature of the product or the perceived qualities associated with its origin, in the same way that consumers make purchasing decisions based on perceived quality of a brand. The needs are thus fundamentally perceptions based on experience or information received from peers or marketing.”) (footnotes omitted).

67. See, e.g., Pete Blackshaw, Satisfied Customers Tell Three Friends, Angry Customers Tell 3,000: Running a Business in Today’s Consumer-Driven World 12 (2008).

68. Wilf, supra note 57, at 33.

69. Id. at 35.

70. Id.

71. Id.

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appeal.72 As marks are increasingly marketed as lifestyle signals—partially in response to the consumer interest in social signaling discussed above—consumers also invest in brands emotionally, often defining their public persona and even their sense of “self” by the way a brand makes them feel or what the brand communicates to others as a matter of relative utility. In this way, consumers “invest psychological meaning, as seen in the significant sales of goods emblazoned with the old-fashioned Coca-Cola mark . . . .”73 In fact, our worldview and sense of self “is shaped by the words we use and by the images that fill our fantasies.”74 Therefore, one may “feel energetic when drinking PEPSI, cool when driving a Chrysler 300C with a HEMI engine, important while shopping at NORDSTROM, caring when buying a HALLMARK card, and ‘arrived’ when wearing a ROLEX watch.”75 The Supreme Court itself has acknowledged that “[t]he protection of trade-marks is the law’s recognition of the psychological function of symbols.”76 Some have gone so far as to compare trademarks to religion because brands help people define themselves and communicate that definition to others in the post-sale environment.77 Therefore, trademarks can create a sense of community centered on a specific brand.78

In a rather stark example of Harrison’s relative utility tattoo analogy,79 a twenty-four-year-old Internet entrepreneur tattooed a NIKE swoosh on his navel, stating that “looking at the symbol each morning ‘pump[ed] [him] up for the day.’”80 According to him, the tattoo reminded him to “Just Do It” every day.81 For this person, the emotional investment in Nike’s trademark was so significant that viewing the trademark each morning was integral to his sense of self.

Furthermore, the very concept of the trademark dilution doctrine encapsulates the intangible, emotional qualities of a trademark. In his seminal law review article, Frank Schechter argued for dilution, stating that the function of a trademark in modern commerce was no longer to identify a producer, but was 72. See generally Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 Yale L.J. 1717, 1727-30 (1999).


74. Kozinski, supra note 43, at 974.

75. Jerre B. Swann, An Interdisciplinary Approach to Brand Strength, 96 TMR 943, 952 (2006).

76. Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205 (1942) (emphasis added).

77. Kevin Lane Keller, Strategic Brand Management 8 (2008).

78. Swann, supra note 75, at 953.


80. Naomi Klein, No Logo 52 (1999).

81. Id.

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intended to “identify a product as satisfactory and thereby to stimulate further purchases by the consuming public.”82 Thus, dilution is actually theoretically linked to consumer satisfaction, not the financial worth of a mark.

Not all scholars believe that trademark owners should appeal to consumers’ emotions or that courts should embrace such practices. Ralph Brown argued that “persuasive” advertising is undesirable because it seeks to “impregnate the brand with . . . powerful emotional stimulants, and so influence consumers to spend money on impulsive, unnecessary and expensive branded goods.”83 In this way, arguably emotional advertising encourages consumers to pay a premium for trademarked goods that are not functionally superior to generic substitutes.84 Similarly, Glynn Lunney has argued that the protection of intangible aspects of a mark, such as its emotional appeal, is socially wasteful.85

Although Brown and Lunney’s criticisms are well received from a normative perspective, consumers clearly derive value from the emotional allure of trademarks and have invested a considerable amount of emotional capital in emotionally appealing marks. Moreover, modern advertisers have consistently capitalized on this emotional appeal. In the 1930s, Coca-Cola used the iconic and emotionally charged figure of Santa Claus to advertise its product.86 Coca-Cola still uses emotional advertising to reach consumers today, focusing more on customer loyalty and “brand love” than actual product sales because, according to Coca-Cola, the former leads to the latter.87

82. Frank Schechter, Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 818 (1927) (emphasis added).

83. Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L.J. 1165, 1175 (1948). Compare Robert G. Bone, Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law, 86 B.U. L. Rev. 547 (2006) (arguing that protecting positive feelings as part of the sellers goodwill is unnecessary) and Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L.J. 367, 437-39 (1999) (arguing that protection of the value of trademarks beyond basic identification of source, such as the protection of trademark prestige or “selling power,” exceeds the costs of competition and is socially wasteful) with Shahar J. Dilbary, Famous Trademarks and the Rational Basis for Protecting “Irrational Beliefs”, 14 Geo. Mason L. Rev. 605 (2007) (arguing that consumers derive value from the intangible aspects of branded products and for strong trademark protection).

84. See generally id.; Edward Chamberlain, The Theory of Monopolistic Competition (5th ed. 1946).

85. Lunney, supra note 83, at 437-39.

86. Coca-Cola’s Santa Claus, Not the Real Thing!, BevNet.com, Dec. 15, 2006, http://www.bevnet.com/news/2006/12-18-2006-white_rock_coke_santa_claus.asp.

87. Rachelle Matherne, Coca-Cola Wants You to Get Emotional, SixEstate Comms., May 25, 2010, http://sixestate.com/social-media/coca-cola-wants-you-to-get-emotional.

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C. Financial Investment

Furthermore, consumers invest a significant amount of capital in trademarks, both financial and informational.88 First, consumers invest financial capital in a trademark when they consciously choose to purchase one brand over another.89 When consumers purchase a good bearing a trademark, they are subsidizing the trademark owner’s advertising costs, which are expended to create product differentiation, to sustain quality, and to reduce consumer search costs, all of which the consumer pays for and invests in when he or she purchases the trademarked good.90

Second, as consumers purchase trademarked goods, they become familiar with the product and the absolute utility of the mark owner’s goods, thus investing informational capital in those marks. In turn, consumers earn a return on the investment in the form of the ability to use the marks as “informational tools” to reduce search costs when making purchasing decisions.91 However, in recent years mark owners have begun to interfere with consumers’ ability to collect on this return. For instance, some trademark owners have attempted to prevent search engines from using their marks to link to and recommend similar products to consumers when the consumer uses the primary trademark as a search term.92 As a normative matter, this interference with returns on consumer investment is undesirable: if sales are lost because a consumer uses a particular trademark to find a lower price or better product via an online search engine, the benefits to consumers outweigh the harm to trademark owners.93 Moreover, such interference with consumers’ informational tools may influence consumer expectations in ways that may affect the way courts define confusion.94

Consumers’ interests in trademarks are vast and varied. Clearly, they are not adequately explained in purely economic

88. Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397, 402 (1990) (explaining ways the public may contribute to a brand’s value by identifying with logos); Litman, supra note 72, at 1730 (explaining that trade symbols earn value from the public investing in those symbols).


90. Id.

91. Deborah R. Gerhardt, Consumer Investment in Trademark, 88 N.C.L. Rev. 427, 484 (2010).

92. See, e.g., Tiffany, Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008); Gov’t Employees Ins. Co. v. Google, Inc., 77 U.S.P.Q.2D (BNA) 1841 (E.D. Va. 2005). For more on this new type of sponsored link confusion, see generally 2-7A Gilson on Trademarks § 7A.09 (2010). 93. Gerhardt, supra note 91, at 484; see also id. at 485 (advocating a “truthful informational tools” exception).

94. See infra Part III.B.

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terms. Relevant consumer interests include social signaling in the post-sale environment, as well as social, emotional, and financial investment in trademarks. The prevention of post-sale, non-consumer confusion about the status of the consumer who purchased the good (relative utility) certainly indicates that courts have a great concern for consumer interests in trademarks. As I explain in Part III of this article, overprotection of relative utility—primarily through the confusion doctrine and its derivations—is causing a severe backlash so that, because of the very protections that were intended to preserve and advance consumer interests, consumers can no longer attain the full relative utility for which they bargained and in which both trademark owners and consumers have invested. Accordingly, the signaling function that courts originally sought to protect is rapidly eroding because of those very same protectionist efforts. It is essential that courts carefully consider how to protect the multiplicity of interests consumers hold in trademarks and simultaneously avoid underprotecting or overprotecting these interests.

III. DRIFTING FROM CONSUMER PROTECTION A. How Courts Are Treating Consumer Interests

Trademark’s dilution doctrine is a particularly potent example of how far courts seem to have drifted from consumer protection considerations. Lemley and McKenna argue that, outside of cases involving confusion in the context of sponsorship or affiliation, confusion doctrine has been expanded too far; it now precludes the use of a trademark even where the use does not affect a consumer’s purchasing decision.95 Excellent examples of such overreaching by trademark owners occur in cases where a trademark owner sues a user because the owner believes that consumers would think that there was some relationship between the owner and the defendant based on the defendant’s use of the mark. For example, Emerson disagreed with the way NBC was using its garbage disposal, which NBC validly owned, fearing that consumers would think that Emerson approved of dangerous uses.96 In effect, such litigation, whether real or threatened, impedes a defendant’s use of a particular trademarked good, which the defendant purchased and validly owns, simply because the trademark owner disapproves of the way in which the defendant is using the good bearing the owner’s mark.

95. See Lemley & McKenna, supra note 16, at 414-15. Lemley and McKenna argue that trademark law ought to only protect confusion as to quality or source of a good. Id. 96. See Belloni, supra note 3.

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The Supreme Court seems to agree with the view of Professors Lemley and McKenna that dilution law has drifted from consumer interests. In Moseley v. V Secret Catalogue, the Court, rejecting the plaintiff’s dilution claim for want of a showing of actual harm, seemed to disapprove of the current state of dilution when it stated that “[u]nlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers.”97 The Court seemed to further criticize dilution when it quoted Frank Schechter’s seminal article, reasoning that “the preservation of the uniqueness of a trademark should constitute the only rational basis for its protection.”98

Thus, this expansion of dilution is a slippery slope, which has driven trademark doctrine away from the protection of consumer interests, and will likely continue to do so. If a trademark owner can prevent NBC from using a trademarked good in a way the owner disapproves of, what is to stop a clothing designer from bringing suit against a celebrity when the celebrity does something unsavory in public while wearing a garment or carrying a bag bearing the designer’s mark? The designer may claim that it fears that consumer will believe the designer approves of the celebrity’s actions.

Post-sale confusion is a second area in which courts seem to have begun to drift from the protection of consumer interests. Courts most often protect relative utility through the post-sale confusion doctrine.99 The original goal of preventing confusion among actual purchasers as to a product’s origin was eventually expanded via the post-sale confusion doctrine to prevent confusion among prospective purchasers. Nonetheless, it took many years for courts to protect pure relative utility—that is, the impression a trademark may have on a third person. As discussed in Part III.B infra, this protection of relative utility eventually became overprotection, which has changed consumer expectations and has led to a fundamental shift in trademark law as courts have begun to drift from the protection of consumer interests.

In one of the earliest post-sale confusion cases, the Second Circuit protected the pure relative utility of the consumer who owned the good. In the 1955 case of Mastercrafters Clock & Radio Co. v. Vacheron & Constantin–Le Coultre Watches, Inc., the court reasoned that there was a violation of trademark law because a visitor who came to a home and saw the defendant’s clock on the wall “would be likely to assume that the [cheaper look-alike] clock

97. 537 U.S. 418, 429 (2003).

98. Id. (quoting Frank Schechter, Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 831 (1927)).

99. See generally Tichane, supra note 46, at 399.

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was [the more expensive, trademarked] clock.”100 Therefore, the court was protecting relative utility: the only confusion in such a case is as to the status of the owner of the clock, or else about the rarity of the brand.101

Then, in Levi Strauss & Co. v. Blue Bell, Inc. the Ninth Circuit saw fit to protect Levi Strauss’s pocket stitching from Wrangler’s infringing use, in part because “Wrangler’s use of its projecting label is likely to cause confusion among prospective purchasers who carry even an imperfect recollection of Strauss’s mark and who observe Wrangler’s projecting label after the point of sale.”102 The Levi Strauss court thus created a new form of confusion “after the point of sale” to protect the impressions of potential consumers, but did not explicitly expand the post-sale confusion doctrine to encompass pure relative utility as the Second Circuit did in Mastercrafters.

Later, the Second Circuit, relying on the Ninth Circuit’s reasoning in Blue Bell, discussed the post-sale confusion doctrine in Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.103 There the court reasoned that

post-sale confusion would involve consumers seeing appellant’s jeans outside of the retail store, perhaps being worn by a passerby. The confusion the [Lanham] Act seeks to prevent in this context is that a consumer seeing the familiar stitching pattern will associate the jeans with appellee and that association will influence his buying decisions.104

Although the Second Circuit attempted to maintain focus on the impact that post-sale confusion would have on prospective purchasers, the only possible effect that seeing a pair of look-a-like LEVI’S jeans on a passerby would have on a prospective purchaser is that of relative utility. A prospective purchaser who sees the jeans on a passerby would know nothing of the quality of the product.105 The only information a potential purchaser could glean from such an observation is relative utility, such as a judgment about the status or wealth of the person wearing the jeans or the (perhaps) mistaken belief that LEVI’S jeans are not rare (that is,

100. 221 F.2d 464, 466 (2d Cir. 1955).


102. 632 F.2d 817, 822 (9th Cir. 1980).

103. 799 F.2d 867 (2d Cir. 1986).

104. Id. at 872-73.

105. Gilson argues that in a case like this, where the passerby would know nothing of the quality of the look-a-like good, there is no harm under the confusion doctrine. See 5-5 Gilson on Trademarks § 5.14 (2010). However, this position overlooks the fact that merely seeing more of a Veblen good could decrease its relative utility where relative utility is based on scarcity.

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not a snob good).106 Therefore, the Second Circuit went beyond post-sale confusion of potential purchasers and protected the relative utility of the LEVI’S trademark—that is, confusion of the general public. Similarly, as one district court stated, “Others who see the [counterfeit] watches bearing the Rolex trademarks on so many wrists might find themselves discouraged from acquiring a genuine one because these items have become too common place and no longer possess the prestige once associated with them.”107

Some courts explicitly protect the general public from confusion concerning trademarks.108 Other courts find confusion only where consumers in the market for the product are confused.109 Five circuits have held that the Counterfeit Trademark Act is designed to prevent post-sale confusion of the general public (as opposed to a potential purchaser) when seeing counterfeit goods bearing a logo.110 In 2005, the Tenth Circuit explicitly held that “the ‘likely to cause confusion, to cause mistake, or to deceive’ test is not limited to direct purchasers of the counterfeit goods. Instead, the correct test is whether the defendant’s use of the mark was likely to cause confusion, mistake or deception in the public in general.”111

As the above cases make clear, many courts, ostensibly in service of the goal of consumer protection, have increased their protection of relative utility in recent years to encompass pure 106. Obviously, the post-sale confusion doctrine protects more than relative utility in the case of counterfeits copies where consumers may actually experience the absolute utility of the good. For example, in Rolex Watch U.S.A., Inc. v. Canner the court stated that “[i]ndividuals examining the counterfeits, believing them to be genuine Rolex watches, might find themselves unimpressed with the quality of the item and consequently be inhibited from purchasing the real time piece.” 645 F. Supp. 484, 495 (S.D. Fla. 1986).

107. Rolex Watch, 645 F. Supp. at 49. More recently, in Hermes International v. Lederer de Paris Fifth Avenue, Inc., the plaintiff sued the maker of cheaper copies of the plaintiff’s bags. 219 F.3d 104, 109 (2d Cir. 2000). The Second Circuit reasoned that “a loss occurs when a sophisticated buyer purchases a knockoff and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knockoff price.” Id. (emphasis added).

108. See Gen. Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351, 356 (6th Cir. 2006) (holding that knock-offs in the stream of commerce could cause confusion “among the general public”); Hermes Int’l, 219 F.3d at 108-09 (finding defendant liable for confusion of “the viewing public” of knockoff luxury good); InstyBit, Inc. v. Poly-Tech Indus., Inc., 95 F.3d 663, 671 (8th Cir. 1996) (holding that “an action for trademark infringement may be based on confusion of consumers other than direct purchasers, including observers of an allegedly infringing product in use by a direct purchaser”).

109. Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 382 (7th Cir. 1996) (holding that “[t]he proper examination is not whether some people viewing [the product] might be confused, but rather whether consumers in the market for [the product] are likely to be confused”).

110. United States v. Foote, 413 F.3d 1240, 1246 (10th Cir. 2005); United States v. Hon, 904 F.2d 803, 806 (2d Cir. 1990); United States v. Yamin, 868 F.2d 130, 133 (5th Cir. 1989); United States v. Gantos, 817 F.2d 41, 43 (8th Cir. 1987); United States v. Torkington, 812 F.2d 1347, 1353 (11th Cir. 1987).

111. Foote, 413 F.3d at 1246.

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social signaling functions. Part of the justification for this protection is that consumers have come to expect a greater level of social signaling from the trademarks in which they invest. However, as discussed in the following subpart, those expectations are actually creating a trademark system where consumers are prevented from using trademarked goods post-sale for the very purpose of social signaling.

B. Why Courts Appear to Have Drifted From Consumer Protection:

Product Placement and Consumer Expectations

Consumer expectations determine whether something is legally a trademark.112 Similarly, consumer expectations, with some limits,113 determine whether a particular use is infringing.114 In Dastar Corp. v. Twentieth Century Fox Film Corp., the Court rejected a claim for passing off where the origin of the good was not in question, but stated in dicta that “[t]he [Lanham Act’s] concept [of origin of goods] might be stretched . . . to include not only the actual producer, but also the trademark owner who commissioned or assumed responsibility for (‘stood behind’) production of the physical product.”115 Dastar reflects the principle that has driven modern Supreme Court trademark decisions: “Trademark law aims primarily to reflect consumer perceptions about brands and to validate their expectations as to the source of goods in the marketplace.”116

Consumer expectations can change rapidly based on what consumers experience in the marketplace,117 and courts then use these expectations to determine whether a particular use of a mark is sufficiently confusing to constitute infringement.118 If the law is contrary to consumer expectations, consumers may be confused if they believe the use of a mark must be authorized

112. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213 (2000) (explaining that there is no trademark unless there is a “consumer predisposition to equate the feature with the source”).

113. In Moseley v. V Secret Catalogue, the Court rejected the notion that mere mental association between a trademark and the alleged infringer’s product is sufficient to prove dilution of the mark. 537 U.S. 418 (2003).

114. See, e.g., Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (holding that “evidence of actual [consumer] confusion” is one of eight factors to be weighed when determining likelihood of confusion).

115. 539 U.S. 23, 32 (2003).

116. Dogan & Lemley, supra note 13, at 501 (emphasis added).

117. Lunney, supra note 83, at 396.

118. See, e.g., Polaroid, 287 F.2d at 495 (holding that “evidence of actual [consumer] confusion” is one of eight factors to be weighed when determining likelihood of confusion); see also Dogan & Lemley, supra note 13, at 485-90 (discussing the idea that consumer expectations may change trademark law).

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when in fact such authorization is not legally required. Therefore, as Dogan and Lemley observed in the area of merchandising rights, “a law based on eliminating consumer confusion may be obliged to give trademark owners the right [that consumers expect] . . . in order to avoid this confusion.”119 Professors McKenna and Lemley have made a similar observation: “Expanding trademark law to prevent remote prospects of confusion will change consumer expectations in ways that may make confusion on the basis of remote connections more likely, which might make still further expansion of trademark law necessary . . . .”120 This scenario, where consumer expectations affect trademark law and trademark law in turn affects consumer expectations, is admittedly circular.121 If trademark law proscribes a particular use of a mark and thus requires licensing or approval, consumers will come to expect this as the norm (even if such a norm is created by “bad legal decisions”122), and vice versa.123

However, if trademark policy is effective, “it will [also] control what consumers experience in the marketplace and therefore, shape their expectations.”124 After all, in many cases,

trademark law acts as a norms creator, establishing standards that shape rather than merely respond to consumer beliefs. The law creates certain limiting doctrines—genericide, trademark use, and fair use, for example—that constrain the scope of trademark rights and that exist whether or not the public is aware of them. Trademark’s norm-creation role is important because it prevents a downward spiral in which the court focuses on the most gullible consumers, lowering the standards and expectations of others. Rigorous application of these doctrines can affect consumer perceptions.125

Unfortunately, in recent years, courts have been rigorous in interpreting the scope of the confusion doctrine and have expanded the same through tangential theories of confusion such as after-market confusion,126 reverse confusion,127 subliminal confusion,128 119. Dogan & Lemley, supra note 13, at 486.

120. Id. at 439.

121. See Lunney, supra note 83, at 397.

122. Dogan & Lemley, supra note 13, at 487. The question of whether trademark law should merely reflect societal norms is a broader question that is outside the scope of this article. 123. Lunney, supra note 83, at 396.

124. Id. 125. Dogan & Lemley, supra note 13, at 487 (footnotes omitted).

126. See, e.g., Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200, 1214-16 (N.D. Ga. 1995).

127. See, e.g., Banff, Ltd. v. Federated Dep’t Stores, 841 F.2d 486, 490-91 (2d Cir. 1988).

128. See, e.g., Playboy Enters. v. Chuckleberry Publ’g, 687 F.2d 563, 567-68 (2d Cir. 1982).

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and confusion about the possibility of sponsorship.129 Thus, courts have lost sight of their norm-creation role and, instead of shaping consumer expectations in order to protect consumer interests, they have validated rapidly changing consumer expectations.130 The problem is not that courts have failed to develop an accurate depiction of the average consumer; on the contrary, courts are accurately reflecting consumer expectations. But this is only half of the courts’ responsibility. They must work to shape consumer expectations in a way that will protect the relevant consumer interests.131 Courts must, quite literally, protect consumers from themselves. The resulting circular norm-creation model, where consumer expectations shape the law and the law shapes consumer expectations, may be illustrated as follows:

The expansion of trademark law has, as Lemley and Dogan

feared,132 influenced consumer expectations so that what may have previously been a relatively non-confusing use of a mark is now confusing to consumers. This expansion prevents consumers from fully realizing their desired interests in trademarks, and it can be attributed to the expectations of consumers themselves. Consumers expect trademarks to say something about them for the purpose of social signaling. Accordingly, mark owners are very careful about crafting just the right message or image they want their mark to convey.

Product placement in movies and television has become one of the most prevalent ways mark owners shape their brand image. In fact, it has become increasingly relevant with the rise of

129. See, e.g., MGM-Pathe Comm. v. Pink Panther Patrol, 774 F. Supp. 869, 875 (S.D.N.Y. 1991).

130. As discussed supra, recent Supreme Court trademark decisions such as Dastar are evidence of the fact that the Court sees one of the purposes of trademark law as validating consumer expectations. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 32 (2003); see also Dogan & Lemley, supra note 13, at 501.

131. See supra Part II.

132. See Dogan & Lemley, supra note 13, at 487.

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technology like DVRs and online services such as HULU, which have decreased the effectiveness of traditional 30-second commercials.133 Thus, product placement spending has increased from $500,000 in 1984 to more than $3 billion in 2004.134 APPLE products alone have appeared in at least 112 films since 2001.135 FORD vehicles have been seen in at least 144 films in the past 10 years.136

There are four types of product placement: (1) “Visual” placement, where viewers simply observe a trademarked product or logo; (2) “Spoken” placement, where a character on a television show or movie mentions a product; (3) “Usage” placement, where a character “handles or interacts” with the product; and (4) “[W]hen the storyline of the show or movie revolves around the product itself,”137 which is generally reserved for sitcoms such as the recent prominent placement of the iPAD tablet in ABC’s Modern Family.138 The 2008 film Sex and the City featured numerous product placements of all four types, including placements of SKYY spirits, GLACÉAU VITAMINWATER beverages, and MERCEDES-BENZ automobiles.139 These brands were featured prominently in the film and, in exchange, the featured brands helped market the film to the public.140 Notably, product placement is not only a way to build relative utility, but also a way to create more legal protection for the owner’s mark as the trademark becomes more recognizable, and thus is provided with more protection from dilution by the courts.141 133. Lorne Manly, On Television, Brands Go From Props to Stars, N.Y. Times, Oct. 2, 2005, http://www.nytimes.com/2005/10/02/business/yourmoney/02place.html?pagewanted=1&_r=1.

134. Id. 135. BrandChannel.com, Tracking Brands in Films, http://www.brandchannel.com/ brandcameo_brands.asp?all_year=all_year#brand_list (last visited Jan. 16, 2011).

136. Id. 137. Roberts, supra note 28, at 619-20; see generally Cindy Tsai, Starring Brand X: When the Product Becomes More Important Than the Plot, 19 Loy. Consumer L. Rev. 289 (2007).

138. Chris Matyszczyk, 30-minute iPad ad on ABC’s “Modern Family,” CNET News, Apr. 1, 2010, http://news.cnet.com/8301-17852_3-10471959-71.html; see also Modern Family, “Game Changer” (ABC television broadcast Mar. 31, 2010). Significantly, Steve Jobs, CEO of Apple, Inc., the maker of the iPAD tablet, is also the largest shareholder in the Walt Disney Company, which owns ABC. Oliver Chiang, IPad, Product Placement Star Of ABC’s “Modern Family” Even Before Launch, Forbes, April 1, 2010, http://blogs.forbes.com/ velocity/2010/04/01/ipad-product-placement-star-of-abcs-modern-family-even-before-launch.

139. Stuart Elliott, “Sex and the City” and Its Lasting Female Appeal, N.Y. Times, Mar. 17, 2008, at C8, available at http://www.nytimes.com/2008/03/17/business/ media/17adco. html; see also Sex and the City (New Line Cinema 2008).

140. Id. 141. See, e.g., Adidas Am., Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1243-45 (D. Or. 2007). In Adidas, the court found that shoes that Payless had been selling bore a confusingly similar three-stripe emblem based not on survey evidence, but on large advertising expenditures, Adidas’s efforts developing brand identity, and its wide

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In service of the goal of careful brand image and product placement control, there has also been an alarming number of cease and desist letters in recent years that attempt to prevent consumers from using a trademarked good in a way the mark owner disapproves of and in the way consumers have come to expect—to communicate to others and the general public something about themselves.142 These cease and desist letters have caused many media companies (who are also consumers) to pixilate trademarks in television and movies in order to avoid litigation, even where the trademark may be important to the story or where it would add a sense of realism. The pixilation of the IN SINK ERATOR garbage disposal in Heroes is one example. The television show Sex and the City featured many prominent brands over the years “to establish the reality of the world the characters lived in”; however, most brands were used with permission.143 In a case of asking for forgiveness rather than permission, HBO’s The Sopranos is known for using actual trademarked goods for the sake of authenticity—such as a scene where a character sprays Tony Soprano in the eyes with a can of RAID insecticide.144 However, just as NBC exposed itself to litigation for its use of the IN SINK ERATOR garbage disposal in Heroes, so too could HBO have received a cease and desist letter for this post-sale use. Indeed, SC Johnson, the maker of RAID insecticide, stated that it would not have authorized this use of the product.145 These cease and desist letters are understandable given the large amount of money and time mark owners spend cultivating their desired brand image through product placement.146 Nonetheless, the prevalence of cease desist letters, product placement, and pixilation has caused consumers to believe they too need post-sale permission from a trademark owner to use merchandise with a trademark in a certain way.147 This has

recognition. Adidas spent eighty million dollars in marketing in 2007, Stephanie Kang, New Balance Steps Up Marketing Drive, Wall St. J., Mar. 21, 2008, at B3, a good portion of which was spent on product placement, see BrandChannel.com, Tracking Brands in Films, http://www.brandchannel.com/brandcameo_brands.asp?all_year=all_year#brand_list (last visited Jan. 16, 2011) (recording that the ADIDAS brand has appeared in thirty-seven films since 2001).

142. Newman, supra note 34, at 360 (“Expanding the reach of trademark law to permit post-sale control over the use of logos will rescind the deal struck between consumers and merchandisers when brand merchandise is bought—the deal that people pay extra for a brand in order to send public social signals to one another.”). There are many websites dedicated to cataloging these cease and desist letters. See, e.g., Chilling Effects Clearinghouse, www.chillingeffects.org (last visited Dec. 12, 2010).

143. Elliott, supra note 139, at C8.

144. Michael McCarthy, HBO Shows Use Real Brands, U.S.A. Today,, Dec. 12, 2002, http://www.usatoday.com/money/advertising/2002-12-02-sopranos_x.htm.

145. Id. 146. See supra notes 133-36 and accompanying text.


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prompted courts to expand the confusion doctrine to encompass such uses and validate the expectations of the reasonable consumer, without considering how this may affect consumer interests.

Similarly, trademark owners have tried to control the discourse related to their mark by enjoining unauthorized uses.148 For example, in 2003, ViewSonic Europe Limited sent a cease and desist letter to the website viewsonicsucks.com, claiming that the website domain name infringed ViewSonic’s registered trademark VIEWSONIC.149 The website was dedicated to criticizing VIEWSONIC products and the company more generally. The specific post that prompted the letter was one containing allegedly defamatory remarks about an employee of ViewSonic and the company simply requested that the specific post be removed. However, the website is no longer in existence. There was clearly no confusion about whether ViewSonic was associated with this website. But ViewSonic was, in effect, relying on trademark law to control the public discourse related to its mark.150 Again, such action leads consumers to believe that all such use of a mark must be authorized, prompting courts to take such expectations into account when determining whether a given use is confusing.

Part of the reason cease and desist letters have such a chilling effect is the confusing state of many areas of modern trademark law. The delicate weighing of consumer expectations and consumer interests has caused courts to lose their way and users to lose the ability to accurately predict the outcomes of trademark litigation. In this way, the law’s ambiguity prolongs litigation, thus increasing costs and encouraging the recipients of cease and desist letters to comply with the request—regardless of the recipient’s belief about the letter’s legitimacy—and discouraging other consumers from using trademarks at all.151 Recall that NBC did not believe there was any trademark violation in the way it used

148. Id.; see also Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 544 (5th Cir. 1998) (finding that confusion over whether plaintiff gave permission for defendant’s use was actionable); Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd., 34 F.3d 410, 415-16 (7th Cir. 1994) (finding actionable confusion based on possibility that consumers would mistakenly believe that plaintiff had given permission for the defendant’s use); Anheuser-Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769, 772, 775 (8th Cir. 1994) (finding actionable confusion where consumers believed that plaintiff gave permission for the defendant’s use); Mut. of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398-402 (8th Cir. 1987) (finding infringement of “Mutual of Omaha” trademark by use of the phrase “Mutant of Omaha” on a t-shirt based in large part on survey that found ten percent of consumers believed that the plaintiff “went along with” the use); Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535, 1546 (11th Cir. 1985).

149. See Letter from ViewSonic Europe Limited to Synergy Global Networks (Aug. 18, 2003), available at http://www.chillingeffects.org/protest/notice.cgi?NoticeID=779.

150. The most likely theory would have been tarnishment. The cease and desist letter specifically referenced copyright and defamation law. Id. 151. For more on the chilling effect of trademark law expansion, see generally McGeveran, supra note 10.

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the IN SINK ERATOR garbage disposal, and yet the trademark was pixilated in future broadcasts and on the DVD.152

Therefore, consumer interests, specifically post-sale use and social signaling, have suffered because mark owners are placing their products more often and in more strategic ways,153 and are consequently attempting to have more post-sale control over goods bearing their marks. For example, most would likely agree that Andy Warhol’s use of a CAMPBELL’S soup can in his famous 1968 painting is not a product placement or any other type of use that would confuse consumers. And yet NBC’s use of a trademark in Heroes in 2006 was an artistic use that spawned litigation. Are these two examples fundamentally different, or does the temporal distinction point to an actual shift in society’s understanding of trademark placement, with a resulting broadening of the likelihood of confusion? If the answer is the latter, it is likely attributable to changing consumer expectations about product placement as a result of its pervasiveness, the chilling effects of cease and desist letters, and the courts’ attempts to conform trademark doctrine to what they perceive as consumer expectations. Given that the uses of CAMPBELL’S, IN SINK ERATOR, RAID, and VIEWSONIC are non-confusing uses (that is, most consumers would realize that the mark owner does not encourage or endorse the given use) and, more importantly, seem unlikely to affect purchasing decisions, consumers who wanted to use these trademarked goods and validly purchased them should not be the ones to pay for the way some consumer expectations have changed in response to the actions of mark owners and the drifting consumer protection rationale of trademark law.

This expansion of trademark protection for mark owners also threatens free speech, including the dissemination of information by consumers to consumers, as well as the critique or parody of famous brands.154 And yet consumers cannot rely on the First Amendment to vindicate their interests. Trademarks are generally considered commercial speech when the mark is used to identify source and quality, and such speech is afforded less First Amendment protection than other types of speech.155 Even where commercial speech is not involved, as with artistic works, the First

152. Belloni, supra note 3.

153. The senior vice president for marketing at Glacéau stated in reference to the Sex and the City film that it carefully controls its brand image by only placing it in films or television series that are a “natural fit” for the brand. Elliott, supra note 139, at C8.

154. See generally Robert C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 Wis. L. Rev. 158 (1982).

155. See generally San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 52 (1987); Cent. Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y., 447 U.S. 557 (1980).

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Amendment is of no help to consumers seeking to defend against a finding of confusion because most courts protect the property rights of trademark owners over individual rights of free expression—at least where there are means of communication other than the given mark. When a consumer uses a mark to communicate ideas (including social signaling) rather than to identify a product’s source, most courts have held First Amendment interests were sufficiently protected when they grant a trademark injunction against the consumer’s use because adequate alternative means of communication other than the trademark itself exist for the defendant to convey his or her message.156 However, there is arguably no adequate alternative means of communicating what a given mark would say about the consumer who owns it—that is, the relative utility of the mark.157 Consequently, because consumers cannot rely on the First Amendment as a defense based on existing jurisprudence, in order to protect their interests, consumers must rely on courts to accurately weigh consumer interests against rapidly changing consumer expectations. One could also argue, however, that if courts are willing to expand trademark law to protect relative utility based on a shift in consumer expectations, they should also be willing to reconsider the strength of First Amendment defenses in the face of the much broader scope of the prohibition on the use of trademarks.

Indeed, the developments in confusion and trademark law in general are not consistent with the protection of consumer interests. They are, however, arguably consistent with current consumer expectations.158 For instance, the expansion of the restriction on post-sale use through dilution and other doctrines, though consistent with consumer expectations, is not consistent with consumer interests because consumers usually own the trademarked goods and the courts virtually ignore that ownership as mark owners consistently restrict or prevent post-sale use. The danger is that this trend will extend to any consumer use of a trademarked good. If a consumer posts a video on YouTube or a picture on Facebook in which the consumer is doing something

156. See, e.g., Mut. of Omaha Ins. Co. v. Novak, 836 F.2d 397, 398 (8th Cir. 1987) (rejecting First Amendment defense as long as alternative means, not restricted by the injunction, existed by which the defendant could express his views); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979) (rejecting a First Amendment argument on grounds that property rights, such as trademark rights, can supersede the exercise of free speech when alternative means of communicating the message are available).

157. Many would undoubtedly argue that there is no substitute for what an authentic LOUIS VUITTON bag would say about their social or financial status.

158. As discussed supra, consumer interests are the normative considerations that trademark law ought to consistently consider and protect; consumer expectations change constantly and are what courts use to determine whether a use is actually confusing.

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unsavory while wearing a NIKE t-shirt, should Nike be able to restrict this use through the ever-expanding post-sale confusion doctrine? While such a restriction is arguably consistent with the expectation that every public or quasi-public use of a mark must be authorized, it hardly seems to reflect the broader interests of consumers, or indeed their property rights in the goods bearing the protected mark. If the trajectory of the evolution of the post-sale confusion doctrine is not bent to adequately reflect consumer interests, consumers will all be like the “sandwich-board men” of Victorian London, walking around promoting trademarks and their owners, but with very little freedom to move.

Therefore, the subjective “reasonable consumer” standard in trademark law’s confusion doctrine—combined with changing consumer executions and the courts’ hasty validation of those expectations—has harmed consumer interests and prevented consumers from receiving the full benefit of the post-sale use of trademarks in which they have invested. What began as the protection of the consumer interest in preserving the relative utility of certain trademarks has prevented consumers from, in many cases, utilizing the signaling function at all.159 Courts do intend to protect consumers, as they make clear in the reasoning of various trademark decisions. However, as countless scholars have recently asserted, the actual judgments and outcomes of these decisions have contributed to the decline of consumer protection—the same protections that the courts themselves have been attempting and claiming to preserve.

IV. SURVEYING CONFUSION AND SHAPING CONSUMER EXPECTATIONS

The social signaling function of a trademark is an interest that consumers desire. In response, trademark owners have embarked on advertising campaigns for the specific purpose of creating and fostering relative utility. Therefore, because trademarks are now often marketed as lifestyle signals, consumers invest in the brand financially, emotionally, and socially and have earned a return on that investment. However, as social signaling has become an

159. See, for example, Paul Alan Levy, The Trademark Dilution Revision Act—A Consumer Perspective, 16 Fordham Intell. Prop. Media & Ent. L.J. 1189, 1889–91 (2006), describing a case where the Public Citizen’s Health Research Group published a book on “the dangers posed by a class of tranquilizers, the benzodiazepines, that it felt were being widely over-prescribed and abused,” the most common of which was VALIUM tranquilizer. Hoffman LaRoche, the maker of VALIUM, sued the Public Citizen Health Research Group on the basis of trademark infringement. Faced with the costs and uncertainty of prolonged discovery and litigation, Public Citizen settled. Future versions of the book contained a more detailed disclaimer than the initial version, and edits were made to make clear that VALIUM was not the only drug in the class of drugs about which the book was written. Therefore, Hoffman LaRoche, through trademark law, successfully controlled the public discourse related to its mark.

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increasingly relevant consumer interest, trademark owners have also been more careful about who or what is associated with their marks in the post-sale environment, using litigation and threats thereof to curtail undesirable uses. When faced with these cases, courts must assess consumer expectations to determine whether there is actionable infringement. And now, as a result of the chilling effects of cease and desist letters and the prevalence of product placement, consumer expectations are changing—many consumers are confused by virtually any post-sale use. Thus, courts, in accordance with consumer expectations, have been quite zealous in restricting unauthorized post-sale uses. The result is a world where courts, in the interest of protecting consumer interests (including relative utility), have allowed trademark owners to assert almost complete control over the post-sale use of their marks and goods bearing them, which has dramatically impeded both the ability of consumers to use trademarks for social signaling as well as other consumer interests.

It is imperative that the courts find a way to effectively balance these considerations. As a normative matter, they must protect consumer investment and give both consumers and trademark owners the opportunity to develop relative utility because these are important consumer interests. Simultaneously, courts must consider the ever-changing, more pragmatic expectations of consumers, keeping in mind the norm-creation role of the courts in shaping these same expectations. It is especially important that courts fulfill these dual aims because consumers are not represented in traditional trademark litigation, and therefore, under the current regime, the court is more likely to find confusion where the majority of consumers may not actually be confused because a plaintiff might convince the court that confusions exists.160

Professors Lemley and McKenna have advocated for narrowing confusion so that only confusion that is actually relevant to purchasing decisions would be actionable—that is, confusion about the actual source of an alleged infringer’s product or service.161 For example, most consumers would not decline to purchase an IN SINK ERATOR garbage disposal unit simply because of the way it was portrayed on Heroes; nor would most consumers avoid using or purchasing RAID insecticide because it 160. See Michael Grynberg, Trademark Litigation as Consumer Conflict, 83 N.Y.U. L. Rev. 60 (2008) (advocating for a consumer-conflict view of trademark litigation). Grynberg explains that courts in most cases do not adequately protect the interests of non-confused consumers because the plaintiff in a trademark suit naturally “protects” confused consumers, while the defendant simply rebuts confusion, resulting in a “two-against-one” scenario. Id. at 62. Therefore, according to Grynberg, courts are actually more likely to find confusion where there is none because consumers are not represented in the typical trademark suit.

161. See Lemley & McKenna, supra note 16, at 414-15.

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was sprayed in Tony Soprano’s eyes. If anything, such uses are free publicity for the brand.

Although limiting actionable confusion to confusion that affects consumers’ purchasing decisions is an excellent first step, courts would still have to determine what is actually relevant to the majority of consumers; the subjective “reasonable consumer” standard, which has, together with changing consumer expectations, caused the decline of the protection of consumer interests, would still be incorporated into the confusion inquiry. Moreover, such a narrowing of confusion would not adequately protect the consumer interest in the relative utility of trademarks. The perceived lack of rarity of a LOUIS VUITTON bag due to a proliferation of unauthorized copies is not confusion about the source of a product, and yet lack of rarity certainly adversely affects relative utility. Lemley and McKenna instead advocate for treating such cases as false advertising claims, abandoning trademark protection altogether. This abandonment, however, is not necessary if the courts can effectively shape consumer expectations.

In order to fulfill their norm-creation role and balance actual consumer expectations against the need to shape those expectations, courts must know what consumer expectations are in the first place. Because courts do not have the necessary resources, they rely on the parties to a trademark suit to gather information, typically through surveys, regarding the confusion and expectations of the typical consumer. Although surveys are now regarded as the most probative available evidence of consumer confusion and expectations,162 they are met with a healthy amount of skepticism because the predictably biased parties to trademark litigation gather and conduct these surveys.163 Parties can easily formulate survey questions to illicit a response that is favorable to the party’s position.164 A series of questions used in a survey conducted in Sears, Roebuck & Co. v. All States Life Insurance Co. illustrates this power of suggestion.165 In Sears, Roebuck, Sears conducted a survey to determine whether consumers were confused over the defendant’s use of “All States Life Insurance”

162. See 3-8 Gilson on Trademarks § 8.11(1) (2010).

163. See Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd., 34 F.3d 410, 416 (7th Cir. 1994) (calling surveys in Lanham Act cases a product of the “survey researcher’s black arts”); see generally Tushnet, supra note 58, at 527-45 (using cognitive science to show the powerful influence survey techniques such as context can have on the results).

164. See, e.g., Gerald Zaltman, How Customers Think: Essential Insights into the Mind of the Market 171 (2003) (“In one study, researchers discovered that consumers described their most recent experience at a bar differently depending on the reason they were given for being interviewed.”)

165. 246 F.2d 161, 171 (5th Cir. 1957).

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and Sears’ use of “Allstate Insurance.”166 However, the first two questions contained the words “Westinghouse” and “Kodak,” both of which were associated with Sears at the time.167 The court found that Sears did “not fairly present[] the name All States Life Insurance Company until after two questions had been asked which if correctly and properly answered called to mind Sears, Roebuck & Company.”168 The questions were as follows:

(1) What comes to your mind when I say the brand name “Westinghouse”?

(2) What does the brand “Kodak” mean to you? (3) What does “Allstate” mean to you? (4) If you wanted Allstate insurance, where would you go? (5) Have you ever heard of All States Life Insurance

Company? (6) Who would you say owns All States Life Insurance

Company?169 Therefore, the court affirmed the trial court’s exclusion of the survey because it is “not truly illustrative of what the public thinks to permit one party to propound questions chosen on its behalf, however fairly attempted, with no opportunity given to the other party to test the answers given by the persons interviewed.”170

Biased surveys add an extra analytical dimension to what is already a challenging puzzle for courts: determining what the relevant consumer expectations actually are and to what extent those expectations must be managed to protect consumer interests. When interpreting survey evidence, which may or may not accurately reflect consumer expectations, courts walk a fine line, discussed above, between (1) effective protection of consumer interests, keeping in mind the court’s norm-creation role in shaping consumer expectations, and (2) overprotection of consumer interests by strict adherence to changing consumer expectations and simultaneous neglect of the norm-creation role. Recently, courts have begun to lean too far toward this second scenario, and have thus failed to sufficiently shape consumer expectations in a way that will protect consumer interests.

The courts need assistance in balancing these often competing and extremely complicated consumer protection considerations. This is difficult because consumers are not represented in trademark litigation. Where resolution of a conflict requires

166. Id. 167. Id. 168. Id. at 172.

169. Id. at 171.

170. Id.

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analysis of complicated and highly specialized issues, parties will often elect arbitration or mediation rather than traditional litigation. However, it is highly unlikely that plaintiffs will assent to arbitration of all trademarked disputes, and it is certainly a plaintiff’s right to have his or her day in court. Therefore, I propose the addition of a third party to trademark litigation—a guardian ad litem of sorts—who would conduct surveys, advocate for consumers more generally, and advise the court of relevant consumer interests and how to shape consumer expectations in a way that will protect those interests.171

When a particular case involves the interests of an infant and he or she is unrepresented in the litigation, “the court has a duty to appoint a guardian ad litem or next friend to assure the protection of the child’s interests.”172 The guardian does not represent the minor as his or her attorney, but rather is charged with the duty of protecting the rights and best interests of the child, including making recommendations to the court on behalf of the minor.173 Although the guardian ad litem is often an individual, courts may also appoint an administrative agency to serve as a guardian ad litem.174

Nearly all trademark litigation affects the rights of consumers, whether directly in a case where the defendant is a consumer being sued over post-sale use, or indirectly where the outcome of the case will shape consumer expectations. Except in the rare case where consumer interests are consistent with the position of one of the parties to the litigation, consumers are not directly represented in the typical trademark case. Therefore, just as courts appoint a guardian ad litem to represent a minor when a suit affects the rights of the minor and the minor is not represented by any party to the litigation, so too in order to protect consumers in trademark litigation a guardian ad litem should be appointed and charged with the duty of protecting the interests of consumers.

There are two figures, both of which are familiar to trademark litigation, which could serve as consumers’ guardian ad litem. The first is the examining attorney who participated in the litigation of the trademark application for the plaintiff’s mark. The examining attorney would be familiar with the mark, any confusingly similar marks, and any opposition to the initial trademark registration.

171. This solution could be applied to likelihood of confusion analysis, where consumer expectations (actual confusion) is an explicit factor, see, e.g., In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), as well as to dilution cases where the court must assess whether the distinctive quality of the mark has been diluted, 15 U.S.C. § 1125(c)(1) (2006).

172. 42 Am. Jur. 2d Infants § 161 (2000).

173. 42 Am. Jur. 2d Infants § 172 (2000 & Supp. 2010).

174. See Uniform Act on Parentage § 9 (1973).

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Nevertheless, such intimate knowledge of the mark and parties involved in the litigation is not necessarily essential information for an impartial consumer advocate. Thus, the second option—a court-appointed expert—could be as effective as the examining attorney, if not more so. The expert could be selected from a variety of disciplines ranging from economists to sociologists, and would simply need to have knowledge of consumer interests in trademarks, consumer expectations, and the market forces that shape consumer expectations.

A court-appointed guardian ad litem finds support in current federal court practice. Federal Rule of Evidence 706 authorizes a court to appoint an expert witness either sua sponte or upon the motion of one of the parties.175 Parties to trademark disputes often prefer to retain their own experts because such experts are obviously more likely to make conclusions consistent with that party’s position. Thus, although court-appointed experts may perform consumer surveys on behalf of the parties, this is rarely done. Furthermore, court-appointed experts do not typically advise the court of the ramifications of a finding of confusion, or a contrary finding, upon consumer interests. Like the selection of a court-appointed expert under the Federal Rules of Evidence, nothing would prevent a party to trademark litigation from calling his or her own expert to respond to the court-appointed guardian ad litem.176

There are two principle tasks, identified above, that make consumer protection a daunting and amorphous task, and with which the guardian ad litem would assist the court: (1) advising the court as to the proper way to balance consumer interests against consumer expectations; and (2) conducting and interpreting consumer surveys,177 divining from them what actual consumer expectations are.

The principal responsibility of the consumer guardian ad litem would serve to ensure that the court is properly shaping consumer expectations and fulfilling its norm-creation role. This assistance is crucial given that the courts have not heretofore effectively shaped consumer expectations, but rather have overprotected consumers based on current consumer expectations, thereby harming consumer interests.178 The simple fact of assessing those interests without the filter of one of the parties’ bias would itself generate better outcomes. Indeed, the consumer guardian ad litem would assist the court in understanding both the impact that judicial decisions have

175. Fed. R. Evid. 706(a).

176. Id. at 706(d) (“Nothing in this rule limits the parties in calling expert witnesses of their own selection.”).

177. Although cost allocation may be an issue, it makes sense for parties to share equally the cost of conducting the surveys, just as is done with court-appointed experts under the Federal Rules of Evidence. Id. at 706(b). 178. See supra Part II.C.

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on consumer expectations and the current state of consumer expectations, including how the court can work to shape them. In this way, the guardian ad litem would help courts protect consumer interests, striking a balance between norm-creation on the one hand, and adherence to current consumer expectations on the other. Courts would have the benefit of the expertise and efficiency of a specialized judiciary or administrative agency, without the expense of creating an entirely new trademark dispute resolution system.179

Although courts are constitutionally limited to adjudicating cases or controversies and are not explicitly charged with setting policy,180 the courts are no strangers to shaping social and economic policy.181 The judiciary is not bound to be merely a reflection of popular beliefs or expectations. If this were the case, important constitutional decisions such as Brown v. Board of Education182 would have never been decided as they were. In fact, according to the Legal Realist school of thought, policy considerations are something every judge considers or should consider, and thus courts should be explicit in their reliance on the same.183 Of course, courts are realistically limited in the degree of social reform they may champion because the judiciary has no power over the “sword or the purse . . . .”184 Moreover, judicial activism has frequently been sharply criticized as antithetical to democratic ideals.185 Nonetheless, as history 179. Specialized intellectual property judiciaries have proven to be efficient in other countries. For instance, “Germany’s use of a specialized judiciary is said to have resulted in more than 90% of patent infringement cases being settled without any expert evidence, saving time and money for the parties involved.” World Intellectual Property Organization, How Can Facts Be Proven in IP Litigation?, http://www.wipo.int/enforcement/en/faq/ judiciary/faq10.html (last visited Dec. 12, 2010).

180. See U.S. Const. art. III, § 2, cl. 1.

181. See generally Gerald N. Rosenberg, The Hollow Hope: Can Courts Bring About Social Change?, at xiv (1991) (“[T]he assertion that judges have historically played only a submissive part in our political structure and that anything more than that is illegitimate. . . . is false history, designed to weaken an institutional that the founders of this country intended to be one of three coequal branches of government.”).

182. 347 U.S. 483 (1954). Despite the fact that segregation was the social norm, the Warren Court held that racial segregation in public schools is unconstitutional and that separate but equal is inherently unequal in the context of public education. Id. 183. See generally John Henry Schlegel, American Legal Realism & Empirical Social Science (1995). 184. The Federalist No. 78 (Alexander Hamilton) (1788), available at http://www.constitution.org/fed/federa78.htm.

185. See, e.g., Max Boot, Out of Order: Arrogance, Corruption, and Incompetence on the Bench 93 (1998) (“America used to be a democracy, a government of, by, and for the people. Now it has all the earmarks of a juristocracy, a government of, by, and for people who have attended law school. Judges have assumed unprecedented authority over our lives, usurping the powers once delegated to elected lawmakers, based on no solid grounding in the text of either a statute or the Constitution itself.”). Compare id. with Mark Kozlowski, The Myth of the Imperial Judiciary: Why the Right is Wrong about the Courts (2003) (arguing that without the Supreme Court’s increasingly enlightened interpretation of the Constitution, the United States would not enjoy the breadth of freedoms she does today).

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makes clear, the courts have an important role in shaping the expectations of both consumers and society as a whole; a consumer guardian ad litem would be an invaluable resource for courts as they navigate this duty.

The second responsibility of the consumer guardian ad litem—interpretive guidance—is essential because the court must know what current consumers expectations are before it can consider them or attempt to shape them. The consumer guardian ad litem could perform consumer surveys; this would eliminate survey bias, which can obfuscate the current state of consumer expectations.186 The guardian ad litem would interpret the surveys in light of an informed view of consumer interests. Where necessary, the guardian ad litem could protect consumers from themselves, advising courts not to allow consumer expectations to be controlling because to do so might affirm those expectations and interfere with a consumer interest, such as post-sale use. For example, the recent expansion of the post-sale confusion doctrine, though consistent with consumer expectations about product placement or sponsorship, has often prevented consumers from realizing their interest in using trademarked goods as social signals. This move away from consumer interests is further evidence that courts need guidance in interpreting and shaping consumer expectations.

The guardian ad litem could not guard against the chilling effects of cease and desist letters because most of these cases do not end with formal litigation. However, as cases that limit restrictions on post-sale use of trademarked goods draw clearer borders, the abusive recourse to those letters might lead to imposition of liability, and thus discourage abuses. A more proactive solution could be to require all cease and desist letters to be sent to the United States Patent and Trademark Office as well as to the recipient. The Trademark Office could then create a public database similar to the Chilling Effects Clearinghouse, except that the federal database would be mandatory. This would subject these cease and desist letters to public scrutiny and perhaps decrease their frequency.

V. CONCLUSION As numerous commentators have explicated, in their

interpretation of trademark law, the courts are drifting from one of the two aims of trademark law: consumer protection. However, my position is that this is not, as others have argued, because courts have failed to consider consumer interests.187 On the contrary, in

186. See supra notes 162-70 and accompanying text.

187. See, e.g., McKenna, supra note 13 (arguing that modern trademark law is producer-oriented, and that this is rightly so since this is the foundation of trademark law).

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their attempt to adequately protect consumer interests and consumers themselves from confusing uses of marks, courts have zealously taken consumer expectations into account.188 But consumer expectations are continually being shaped by what consumers experience in the marketplace. The proliferation of product placements, cease and desist letters from mark owners in response to unauthorized post-sale uses, and overly protectionist court decisions have all shaped consumer expectations so that consumers now believe that virtually any post-sale use of a mark must be authorized.189 This expectation, which courts reinforce, prevents consumers from receiving a return on their social, economic, and emotional investments in trademarks because they cannot use trademarks in the post-sale environment as freely as they would like. Courts could ameliorate the deleterious effects of changing consumer expectations by shaping expectations in a way that is actually beneficial to consumer interests. However, the courts, in clinging firmly to existing consumer expectations, have lost sight of their norm-creation role.190

Therefore, the courts need help interpreting consumer expectations and ascertaining to what extent those expectations should be shaped in service of the protection of consumer interests. A consumer guardian ad litem, similar to a court-appointed expert, would be able to advise the courts on these issues and ensure that consumer interests are adequately protected in trademark litigation, where consumers are simply not represented.191 A consumer guardian ad litem would additionally help to eliminate party bias from consumer surveys, which are often used to determine confusion in trademark litigation.

Unless courts learn to effectively constrain and shape consumer expectations, influencing social policy as they have done in other areas such as public education, mark owners themselves will continue to influence consumer expectations in accordance with their own interests. Trademark law will then drift even further from the protection of consumer interests toward a producer-centric regime. If the courts continue to neglect their norm-creation role in favor of strict adherence to existing consumer expectations, trademark law will find itself in a position where the “public mind is critical but the public right is minimal.”192

188. See supra Part III.A.

189. See supra Part III.B.

190. See supra notes 124-31 and accompanying text.

191. See supra Part IV.


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