More than IP: trademark among the consumer information laws.

• Author: Grynberg, Michael
• Position: Intellectual property - I. Interconnected Issue Analysis D. Upshots through Conclusion, with footnotes, p. 1465-1499

4. Upshots

   This subpart draws some lessons from considering trademark issues in light of the broader consumer information system.

   1. Consumer Information Law as a Complex System

      The consumer information "ecosystem" is complex. Its many players and regulatory regimes overlap and interact in a variety of ways, some not immediately obvious. Evaluating any particular doctrine or answering any question that implicates multiple bodies of law is therefore complicated.

      Some judicial ramifications are discussed below, but it is worth considering the challenges for those looking to improve the operation of consumer information law as a policy matter. (186) Suppose a food advocacy organization wishes to stabilize the meaning of the term "local." Any effort requires looking to multiple doctrines while considering the activities of multiple institutional actors. For example, the term "local" raises issues of the line between express and implied falsehoods. The claim that a food is local encompasses a range of meanings--for example, it was grown locally, it was packaged locally, local workers grew the food, the inputs used were local, the proceeds of the sale will be directed to or spent within the area, and so on. Additionally, the term may encompass a geographic range, from within the county to within the state to within the country. Some of these claims may be true; others, false. A false advertising suit (187) faces the difficulty of determining which meanings are perceived by the intended audience, but that analysis assumes that the use of local may encompass a range of meanings.

      Our advocacy group moves up the line and attempts to secure an official definition of local. Here, it will have to account for a government regulator. Now the goal is to fix meaning broadly, rather than to deem a particular message as being within or without a range of permissible meanings. The desired official, fixed definition may become a double-edged sword, potentially excluding members of the enacting coalition. Where once a range of meanings could satisfy a sense of what it means to be local, (188) the term's meaning will likely become more circumscribed, presenting issues of under- and overinclusion and a differing calibration of the rules/standards divide (not to mention the risk that once the battle at the regulatory level begins, interests with a contrary definition of local might prevail). That change will, in turn, filter back down to other consumer information regimes, as consumers who attach one meaning to the term as part of everyday language may adopt another in response to an official interpretation.

      Or we can move down the line to the trademark solution, forming a certifying body to promote a specific vision of the meaning of local. These efforts would face the collective action problem of establishing a certifying entity with (1) the requisite independence from the sellers it would benefit, and (2) the resources to produce a signal strong enough to be heard above the noise generated by those promoting differing definitions. Because not all competing labels are legitimate, (189) the amount of competing noise would also depend on other regimes and actors. That is, does the FTC crack down on loose certification practices? Does state law allow a remedy when consumers are deceived by lax certifiers? (190)

      Though not intractable, these issues underscore the fact that the complexity of the task reaches beyond choosing the optimal definition of local. They also create challenges for administering trademark law.

   2. How Should Trademark Cases Be Decided?

      The Lanham Act's text is open-ended in many respects, inviting some judicial creativity, (191) and much of trademark law has been made in the common law style. The question of how much that method should persist and guide future trademark developments is contestable both normatively and descriptively. (192)

      The debate over whether case-by-case adjudication or broad legislation produces optimal policy is familiar. Advocates of the common law approach argue that its narrow focus on particular parties and their specific issues allows the law to develop in a careful, incremental manner. (193) Skeptics view the primacy of the particular as a weakness. The artificial narrowing performed by the legal process may leave courts unable to appreciate the full ramifications of their decisions. A legislature has the ability, at least in theory, to take a more holistic approach to issues and consider all relevant actors and arguments. (194)

      In the trademark realm, this latter dynamic may be exacerbated by the ability of repeat plaintiff players to choose unsympathetic targets. By picking defendants that judges are likely to paint as bad faith actors, (195) plaintiffs are able to shape the law to their advantage in a manner detrimental to future defendants with more plausible claims of acting in the overall public interest. (196)

      A common law approach to trademark is also open to the critique that trademark's policy issues are too complex for optimal resolution by judges as opposed to legislators. (197) This is both a function of courts' relative ability to obtain information but also a byproduct of their being able to deal only with the parties before them. Trademark litigation compounds the problem by having a difficult fundamental inquiry. Attempts to prove that consumers are likely to be confused generally proceed in the absence of any actually confused consumers. The fact-finder faces the difficult task of projecting what a consumer would likely experience (after defining that consumer) and filtering that analysis through the sometimes competing (and contested) interests served by trademark law. And the court must do so with due regard to buyers, sellers, and competitors not before it.

      The overlapping regimes governing the generation and consumption of consumer information suggest that legal complexity--knowing what is going on in other regimes--is another problem to add to the mix. The interplay of multiple doctrines may not be fully appreciated insofar as the parties may not know to call the issue to the court's attention. This threatens the promise of case-by-case adjudication, the notion that we might have narrow rulings precisely calibrated to particular facts.

      In my view, the complexity of the interaction between trademark and other consumer information laws suggests caution regarding common law making in trademark law. Creating policy is hard enough without delving into other, intertwined doctrines. But this skepticism exists to the extent that trademark law cannot be simplified. If trademark law shortens its reach, the benefits purportedly offered by common law making will be easier to realize.

      Trimming the overlap between trademark and other consumer information regimes may simplify its policy questions. As described in the next Part, one way to do this is for trademark law to look for ways to offload issues that are, or may be better, dealt with elsewhere.

      2. OFFLOADING

      As discussed above, trademark law is not what it used to be. For good or ill, it reaches far beyond its traditional role of preventing the passing off of goods. But trademark is not the only game in town; other consumer information regimes address many of the policy concerns driving trademark's expansion. This Part argues that trademark law would often benefit by "offloading" some of its acquired baggage elsewhere.

      Offloading is not a new concept in trademark litigation. Courts have often pruned trademark's overgrowth to limit conflict with other IP laws. (198) The famous examples concern overlaps with patent and copyright. For example, judges have gotten over their reticence with extending trademark protection to nonword marks. Colors, product packaging, and, to a lesser extent, product designs are eligible for trademark status. (199) It is a small step from protecting such designs as source-identifying trademarks to using trademark law to stifle competition in product markets. A useful design that might be protected by a time-limited patent might instead become an immortal trademark. (200) This would threaten the policies of patent law, which is the designated federal venue for the protection of inventions qua inventions. (201)

      Several rules therefore patrol the boundary between trademark and patent law. Most notably, the functionality doctrine denies trademark protection to utilitarian subject matter. (202) Courts and commentators, in turn, consider the doctrine with an eye to patent law, which is the normal venue for the protection of inventive design. (203)

      The conflicts reach beyond patent law. Cases concerning aesthetic functionality implicate copyright and design patent policy. (204) Trademark may be claimed over expressive content, raising copyright policy issues. (205) State IP regimes create similar problems. (206)

      Courts pay less attention to the role of other consumer information regimes in considering trademark's proper scope. This Part argues that these laws offer an underdeveloped basis for limiting trademark law's reach. The policies driving claims at trademark's periphery would often be better off offloaded to and addressed by one of these alternative regimes.

1. Trademark's Expansion and Its Challenge for Reformers

   The argument developed here is proffered as a mechanism for simplifying trademark's administration as part of a larger system of consumer information law. It is also an approach to reforming some of trademark's excesses. The rationales may be independent--that is, one may be concerned with simplifying consumer information law but not with trademark overreach and vice versa--but it is worth situating the second perspective before proceeding.

   Critiques of trademark's expansion have a problem. Congress rewrote the Lanham Act in part to keep up with expansive judicial interpretations of its original terms. (207) The resulting open-ended text leaves room for courts to expand the...