More than IP: trademark among the consumer information laws.

• Author: Grynberg, Michael
• Position: Intellectual property - Introduction through I. Interconnected Issue Analysis C. Hidden Consumer Information Laws? p. 1429-1465

TABLE OF CONTENTS INTRODUCTION I. INTERCONNECTED ISSUE ANALYSIS A. Consumer Information Law 1. Trademark a. Trademark's Purpose b. Trademark's Growth 2. Other Private Rights of Action 3. Administrative Regulation 4. Interacting Regimes B. Simultaneous Analysis 1. Keyword Advertising 2. Merchandising 3. Counterfeits and What to Do About Them 4. Policy Priorities a. Geographical Indications b. Thinking Small c. Thinking Large d. Certifying 5. Who Is the Reasonable Consumer? C. Hidden Consumer Information Laws? D. Upshots 1. Consumer Information Law as a Complex System 2. How Should Trademark Cases Be Decided? II. Offloading A. Trademark's Expansion and Its Challenge for Reformers B. Why and When to Offload C. Reclassifying Harms 1. Nominative Use Then 2. Nominative Use Now 3. Developing Safety Valves D. Trademark Quality E. Limiting the Subject Matter of Consumer Information Law F. The Risks of Offloading 1. False Connections 2. False Coverage 3. The Illusion of Doctrinal Autonomy 4. Something Else to Be Wrong About? CONCLUSION INTRODUCTION

A lot of legal scholarship ponders trademark's relationship with other forms of intellectual property (IP). (1) This is no surprise. Trademarks, copyrights, and patents all protect intangible rights. As their respective legal regimes evolve, their policies may come into conflict due to overlapping subject matter. The resulting doctrinal tensions need reconciliation and provide fodder for analysis.

That said, thinking about trademark boundaries in terms of other IP laws is a bit odd. Copyrights and patents exist in order to incentivize invention and expression. (2) Trademark performs a different role. It is more fundamentally regulation of consumer information. (3) As such, it may enjoy a greater kinship with other consumer information regimes, be they based on private rights of action, like federal false advertising law, (4) or the regulatory activities of agencies like the Federal Trade Commission. (5)

This Article explores the consequences for trademark of being just one of many consumer information laws. Some of the issues addressed by trademark recur across regimes, inviting classification (6) and comparison (7) of different approaches to similar questions. My focus, however, is elsewhere. Rather than asking whether, for example, the Federal Trade Commission's definition of misleading advertising ought to guide parallel assessments in trademark, or making claims about the nature of misleading conduct, (8) this Article is interested in the consequences for trademark of the fact that multiple regimes answer these questions.

Part I begins the inquiry by describing trademark's connection with other consumer information laws. In many cases optimal trademark policy--by whatever criteria--depends on the state of play in another regime. This complicates trademark's development in multiple ways. It is not simply a problem of determining how another body of law treats the related issue. Identifying the relevant parallel regime is not always easy. Indeed, sometimes the laws most pertinent to the production of consumer information are more general in nature--think, for example, of the role that simple trespass law plays in determining what we know about how our meat is raised--and therefore easy to overlook.

The problem underscores the complexity of the larger "ecosystem" of generators and users of consumer information and the laws governing them. The various components of this broader structure may interact opaquely. The resulting lack of clarity has consequences for trademark's future development and the question of how responsibility for that development should be divided between judges and legislators. The difficulty of crafting rules with an eye toward interrelated doctrines may be reason to question the wisdom of a judge-driven, "common law" approach to trademark decisions. Alternatively, courts should look for ways to accommodate consumer information law's variety by simplifying trademark issues as much as possible in order to minimize the need for cross-doctrinal assessments.

The balance of the Article explores one approach to simplification. Part II develops the idea that trademark law might benefit from "offloading" some of its expanding scope to other consumer information regimes. Claims at trademark's peripheries often address subject matter that is the core concern of other causes of action. Letting such claims into trademark creates several problems. It risks upsetting settled policy tradeoffs in other bodies of law, raising accountability issues when those understandings were the product of political settlement. Importing such claims is also detrimental to trademark law. Although the external body of law will have doctrines designed to limit the reach of particular claims, these limitations may not translate into trademark law. The imported claim may therefore assume an unexpected scope, free of the doctrines that would normally cabin its reach. The resulting instability undermines trademark law's coherence and transparency as courts force new claims into now-ill-fitting doctrinal boxes. Offloading such causes of action from trademark law into more appropriate regimes offers an avenue for improving the quality of trademark doctrine. The remainder of Part II gives several examples while acknowledging some limits to this approach.

1. INTERCONNECTED ISSUE ANALYSIS

Trademark law is just one of many regimes regulating a larger system of consumer information generation and consumption. Optimal trademark policy will often depend on how other consumer information laws operate. This Part provides some examples and explores the consequences for judicial approaches to the Lanham Act.

1. Consumer Information Law

   Before proceeding, it is worth providing an overview of trademark law in particular and consumer information law in general. For present purposes, consumer information law is defined simply as the law regulating the production and dissemination of information relevant to consumers in making purchasing decisions. The category is broad; the following describes just a sample.

   1. Trademark

      1. Trademark's Purpose

         Trademarks and servicemarks are used to identify and distinguish goods and services while signaling their source. (9) Justifications for legally protecting trademarks generally fall into one of two camps. The first focuses on the consumer's interest. Trademark rights prevent fraud (for example, passing off a product as that of another) while assisting consumers in finding their preferred product. (10) A consumer reaching for a product may expect it to have the same source--and therefore the same attributes--as other goods bearing the same mark that she tried in the past. Consumers therefore need not expend the same effort--or search costs--to verify product quality or find their preferred product as they would in a world without trademark protection. (11) The ability to rely on a trademark has the ancillary benefit of allowing sellers to compete on the basis of quality. Because consumers may rely on trademarks, sellers can invest in quality without fear that competitors will copy their trademarks to undercut them with a similarly labeled product. (12)

         Although this latter benefit also promotes consumer welfare, it is often framed as a benefit afforded by trademark law to sellers. (13) This is the second traditional trademark justification. Trademark law exists to protect the "goodwill" that a seller forms with the consuming public, (14) and the trademark cause of action defends it from misappropriation by others. (15)

      2. Trademark's Growth

         Trademark law has grown in scope and power in recent decades. A brief description of that expansion follows. More extensive accounts are available elsewhere. (16)

         Trademark law is traditionally concerned with the deceptive seller who tricks consumers by mislabeling his goods as someone else's. (17) Modern trademark law has a lot more on its plate. First, it polices more than labels. Today's doctrine largely rejects subject matter limitations, creating difficulties as creative plaintiffs claim protection over not only product designs, (18) but a range of nontraditional exotic marks such as buildings, (19) store decors, (20) film scenes, (21) and expressive content generally. (22)

         Second, trademarks are more powerful. The trademark cause of action now reaches beyond the home market of the plaintiff's product. (23) Courts will assess likelihood of confusion--the trademark liability standard--at times other than the point of sale. (24) Pre-sale and post-sale confusion may create liability even if actual purchasers are not confused. (25) Trademark claims need not be restricted to confusion about a product's source or origin. They now encompass confusion of sponsorship and affiliation. (26) This concept of "approval" reaches beyond the notion of standing behind or otherwise vouching for a product as a franchisor might. Courts entertain claims in which the alleged confusion is simply that consumers think the mark holder permitted a reference by the defendant. (27)

         Finally, Congress has created entirely new categories of trademark claims. The federal trademark dilution statute allows owners of "famous" marks to target activities deemed likely to "blur" or "tarnish" their marks even if there is no likelihood of consumer confusion. (28) Anti-"cybersquatting" legislation gives trademark holders the ability to claim domain names that are "confusingly similar" to their marks. (29) Here, too, likelihood of consumer confusion is not required. (30)

         Trademark's expansion creates a range of problems. Ambitious plaintiffs threaten competition when they claim trademarks in functional subject matter, (31) interfere with comparative and other referential advertising by competitors, (32) attack innovation in information markets, (33) or use immaterial confusion to harass competitors. (34) Likewise, the monopolization of merchandising markets...