Confusion isn't everything.

• Author: McGeveran, William
• Position: Trademark confusion - Continuation of II. What's Wrong with This Picture? through Conclusion, with footnotes, p. 278-318

1. Recurring Conflicts

   1. Product Features

      As noted above, it took a long time for courts to recognize features of a product's design as trademark subject matter. (99) This delay stemmed in part from two concerns about trade dress protection. First, product features often affect the performance of a product, and those features are therefore potentially the subject of utility patent. Thus, allowing trademark protection of those features may undermine the integrity of the patent system and its embedded competition norms. Second, even when no patents cover a product feature, blocking potential rivals from using that feature can have particular negative effects on competition.

      Current Supreme Court precedent addresses these concerns in two ways. First, product design, unlike product packaging, can never be considered inherently distinctive and is only protectable when the claimant can prove that design features have acquired source significance. (100) Second, there is no protection for functional product features, which the Court has defined as those that are "'essential to the use or purpose of the article,' or [that] 'affect[ ] the cost or quality." (101)

      When the product features in question are mechanically useful, functionality doctrine gives great weight to concerns about the effect on competition values. The strength of this doctrine is directly related to two features of the test. First, mechanical functionality is unique among existing limiting doctrines because it does not require courts to consider confusion at all. Utilitarian features are not eligible for trademark protection regardless of any confusion that may result from use of that design by others. (102) Second, the Supreme Court's concern about potential conflict with the substantial existing body of patent law caused it to put a heavy thumb on the scale against trademark protection for features that have any utilitarian function whatsoever. (103) Its decision in TrafFix Devices, Inc. v. Marketing Displays, Inc. defines features as "essential to the use or purpose" of an article whenever those features are not "ornamental, incidental, or arbitrary." (104)

      Mechanical functionality is an effective limiting doctrine because courts can resolve cases early and efficiently, avoiding fact-intensive inquiry into either consumer confusion or the adequacy of alternative designs that the defendant might have used. (105) To take one recent example, the Seventh Circuit affirmed summary judgment against the maker of Quilted Northern toilet paper, which claimed that a "diamond-shaped embossed design on the tissue" was a protectable trademark, (106) The court relied on two key facts to support the finding of functionality: the plaintiff had secured utility patents on the way the design "improve[d] (perceived) softness and bulk, and reduce[d] nesting and ridging," (107) and it ran advertisements that "link[ed] the quilted feature to numerous utilitarian benefits, such as softness, comfort, and absorption." (108) The court disregarded the possibility that consumers might identify the design with the plaintiff's product (which is, after all, called Quilted Northern), and it refused to consider other patterns the defendant might have chosen instead. (109) A minority of courts still become entangled in more complex speculation about the availability of alternative designs. (110) Increasingly, however, judges interpret TrafFix to enable, and indeed require, efficient resolution of mechanical functionality disputes. (111) We think this is the correct reading of the case.

      Courts have been much less successful in cases involving aesthetic or ornamental design features. In TrafFix, the Supreme Court explicitly included such features under the protective umbrella of functionality doctrine. (112) At the same time, however, it suggested that courts in these cases should consider whether granting trademark rights over aesthetic features "would put competitors at a significant non-reputation-related disadvantage." (113) This phrasing potentially reintroduces the questions of alternative design and the consumer perception of the link between a claimed feature and the markholder's "reputation." It also disregards potential conflicts between trademarks for aesthetic features and the limits of design patent and copyright law, notwithstanding the fact that the Supreme Court made many of its most well-known pronouncements about the importance of copying and competition in cases that involved design patents. (114) As a result, courts continue to intermingle confusion reasoning with their aesthetic functionality determinations. And despite the language in TrafFix, some circuit courts persist in their refusal to recognize any limiting doctrine for aesthetic product features. (115) Overall, calling the current doctrinal landscape of aesthetic functionality chaotic would be an understatement. (116)

      The recent dispute between fashion houses Christian Louboutin and Yves Saint Laurent concerning red outsoles on women's shoes demonstrates the difficulty. (117) In its opinion, the Second Circuit fretted about inherent conflict between promotion of competition and prevention of confusion no fewer than three times, each time formulating the tradeoffs somewhat differently. (118) When it explained the aesthetic functionality doctrine, the court laid out a cumbersome sequence of inquiries in which the question of aesthetic functionality could be considered only after resolving all other issues of protectability and confusion. (119) The court warned that it was difficult to disentangle source identification from "aesthetic function," thereby suggesting that any amount of confusion about source could negate an aesthetic functionality determination. (120) And it emphasized that the issue could be decided only through a "fact-specific inquiry" and never by "per se rules." (121) To make matters worse, after discussing the aesthetic functionality doctrine and single-color marks for nine pages of the Federal Reporter, (122) the court eventually sidestepped the question entirely by construing Louboutin's mark narrowly to cover only contrasting red outsoles, and not all-red shoes like those Yves Saint Laurent sold. (123)

      We have no doubt that ornamental design features can have a significant competitive impact. It is difficult to imagine, for example, how one could effectively sell strawberry-flavored ice cream that was not pink. (124) Similarly, a pool hall's particular arrangement of pool tables, dark wood, and neon beer signs may reflect common attributes of a motif that many people desire when they go out to drink and shoot pool. (125)

      Granting exclusive control over any features demanded by customers is risky business. It may eliminate potential consumer errors about the connection between different brands, but it also may burden would-be market entrants, reduce consumer choices, and impede innovation. These are strange outcomes for an area of law that is supposed to make markets more competitive. At one time the narrow subject matter of trademarks would have avoided these conflicts, but that time is long gone. While courts have developed an effective defensive doctrine for mechanical functionality that structurally prioritizes utilitarian features over prevention of confusion, they have been unable to do the same for other features of product design. One significant reason is their inability to accept that avoiding consumer confusion is only the means for trademark law to promote competition, not the end in itself. Prevention of confusion often can reduce meaningful competition, and there is no reason to believe that the first goal is systematically more important for consumer welfare than the second. (126)

   2. Third-Party Promotions

      Third parties often need to incorporate existing marks in promotion of their own goods or services. (127) An obvious example is comparative advertising by direct competitors of the markholder. Other situations include uses of a mark by third parties whose businesses intersect with the markholder's--resellers, (128) repairers, (129) or brokers, (130) to name a few. Finally, in the "classic" fair use scenario (131) a producer draws on the original "dictionary" meaning of a trademark to describe its products. (132)

      Current trademark law covers these situations with a doctrinal potpourri--"classic" fair use under [section] 33(b)(4) of the Lanham Act, (133) nominative fair use, (134) comparative advertising, (135) and more. (136) Rather than clearly sheltering competition interests based on their own importance, these approaches often become hopelessly entangled in analysis of consumer confusion. (137) In other cases, courts cut to the chase and go straight to a confusion analysis. (138) By any route, whether by applying special limiting doctrines or relying on the prima facie case, most courts hunt for confusion. They often vindicate competition interests only to the extent they determine that confusion is absent. (139) This is true even in the descriptive fair use context, notwithstanding the Supreme Court's holding in KP Permanent that the plaintiff, and not the defendant, bears the burden on the question of confusion, and that some amount of confusion is compatible with fair use. The problem is that the Court expressly countenances consideration of the extent of likelihood of confusion in determining fair use. (140) And courts have done just that. (141)

      The confusion-oriented approach gives short shrift to the direct benefits consumers get from many third-party uses of marks. Forbidding such uses of the underlying trademark can deprive consumers of important information that they may need for purchasing decisions. (142) It also can disadvantage service providers like repairers and resellers who specialize in certain brands, as well as anyone who needs descriptive language to explain their products properly, by requiring them to avoid the words that most...