Search and Persuasion in Trademark Law

The consumer, we are led to believe, is the measure of all things in trademark law. Trademarks exist only to the extent that consumers perceive them as designations of source. Infringement occurs only to the extent that consumers perceive one trademark as referring to the source of another. The most intellectual of the intellectual properties, trademarks are a property purely of consumers\u27 minds. The simple idealist ontology underlying trademark law is largely responsible for the law\u27s characteristic instability. Since 1992, the Supreme Court has considered - and in some cases, reconsidered - seven trademark cases. The Court\u27s copyright cases garner the media and celebrity attention, but it is the trademark cases that most clearly express the unsteady state, the entre deux temps condition, of current American intellectual property law. There is a reason for this. Trademark law is arguably the most difficult of the intellectual property laws to contemplate, and its outcomes when applied to facts are the most difficult to predict. This is because it requires a form of what John Keats called negative capability, the capability, more specifically, to think through the consumer and see the marketplace only as the consumer sees it. From the beginning, trademark law has sought to resist the negative capability called for by its underlying idealism. It has sought to limit the dependence of the object of the law, the trademark, on the vagaries of the subject of the law, the consumer. In doing so, the law has embraced an ideal type of the subject. Just as copyright doctrine has based itself upon a largely mythical author construct, so trademark doctrine has based itself upon a largely mythical consumer construct. Where the former describes an impossibly romantic producer, however, the latter describes an impossibly utilitarian consumer. Both figures are conceived of as sovereigns, that is to say, as egoists, but where the sovereign author is inspired, even capricious in her egoism, the sovereign consumer is a utility maximizing agent of unbounded rational choice. By means of a mechanical procedure of search, which trademarks are said to facilitate, she satisfies exogenously determined preferences, on which trademarks are said to have no effect. Her psychology is understood to be predictable, administrable, and ultimately ameliorative. The sovereign consumer is the antithesis of and eliminates the need for negative capability

What Trademark Law Is Learning from the Right of Publicity

In 2006, Stacey Dogan and Mark Lemley published the now classic article “What the Right of Publicity Can Learn from Trademark Law.” There they urged us to “[r]econceiv[e] the right of publicity as a trademark-like right,” particularly because “looking at the right of publicity through the lens of trademark law offers logical ways to limit the right.” Right of publicity law’s failure to incorporate trademark law’s limitations had resulted, they argue, in the right of publicity functioning as “a mutant version of trademark policy . . . .” I argue here in response that regrettably, notwithstanding Dogan and Lemley’s good advice, the reality is that it is trademark law that has become more like right of publicity law. Indeed, trademark law is in danger of becoming a “mutant version” of right of publicity policy. To defend this claim, I will first briefly survey the conventionally-recognized similarities and differences between trademark law and right of publicity law. I will then propose a more complicated—and, I think, more accurate—comparison between the two areas of law and argue that they are converging in many important ways, giving us the worst of both worlds. In what follows, I will focus more on trademark law, not only because many other contributions to this Symposium thoroughly discuss right of publicity law, but also because I think we should be especially concerned with trademark law’s mutation in the age of Burwell v. Hobby Lobby Stores and Citizens United v. Federal Election Commission into a kind of right of publicity law for corporate personhoods. Before I proceed, I should emphasize one point from the start. I very much doubt that Dogan or Lemley would disagree with the general thrust of my argument, not least because much of it draws upon other work by them

Search and Persuasion in Trademark Law

The consumer, we are led to believe, is the measure of all things in trademark law. Trademarks exist only to the extent that consumers perceive them as designations of source. Infringement occurs only to the extent that consumers perceive one trademark as referring to the source of another. The most intellectual of the intellectual properties, trademarks are a property purely of consumers\u27 minds. The simple idealist ontology underlying trademark law is largely responsible for the law\u27s characteristic instability. Since 1992, the Supreme Court has considered - and in some cases, reconsidered - seven trademark cases. The Court\u27s copyright cases garner the media and celebrity attention, but it is the trademark cases that most clearly express the unsteady state, the entre deux temps condition, of current American intellectual property law. There is a reason for this. Trademark law is arguably the most difficult of the intellectual property laws to contemplate, and its outcomes when applied to facts are the most difficult to predict. This is because it requires a form of what John Keats called negative capability, the capability, more specifically, to think through the consumer and see the marketplace only as the consumer sees it. From the beginning, trademark law has sought to resist the negative capability called for by its underlying idealism. It has sought to limit the dependence of the object of the law, the trademark, on the vagaries of the subject of the law, the consumer. In doing so, the law has embraced an ideal type of the subject. Just as copyright doctrine has based itself upon a largely mythical author construct, so trademark doctrine has based itself upon a largely mythical consumer construct. Where the former describes an impossibly romantic producer, however, the latter describes an impossibly utilitarian consumer. Both figures are conceived of as sovereigns, that is to say, as egoists, but where the sovereign author is inspired, even capricious in her egoism, the sovereign consumer is a utility maximizing agent of unbounded rational choice. By means of a mechanical procedure of search, which trademarks are said to facilitate, she satisfies exogenously determined preferences, on which trademarks are said to have no effect. Her psychology is understood to be predictable, administrable, and ultimately ameliorative. The sovereign consumer is the antithesis of and eliminates the need for negative capability

Testing for Trademark Dilution in Court and the Lab

Federal courts are currently split, even within particular districts, on the basic question of what a plaintiff must show to establish that a defendant’s conduct constitutes trademark dilution by blurring. Federal trademark law defines “dilution by blurring” as “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” In construing this statutory language, a majority of courts have held that to establish blurring, a plaintiff need only show that consumers associate the defendant’s mark with the plaintiff’s famous mark. These courts appear to assume that to the extent that there is consumer association, this association alone will “impair[ ] the distinctiveness” of the famous mark. A minority of courts have held that the plaintiff must show both consumer association and that the consumer association “impairs the distinctiveness” of the famous mark. In this Article, we make three contributions to the current debate over what must be shown to establish dilution by blurring. First, we report the results of a set of experiments that reveal that the majority approach is fundamentally deficient. These experiments demonstrate that even when consumers associate a junior mark with a famous senior mark, this association does not necessarily result in any impairment of the ability of the senior mark to identify its source and associations. Second, we set forth a new method for determining when association is likely to lead to impairment. This method, which we term the “association strength test,” evaluates changes in how strongly survey respondents associate a mark with its source or attributes upon exposure to a diluting stimulus. Third, we evaluate the current state of the art in trademark dilution survey methodology: response time surveys. These surveys purportedly show both consumer association and impairment. Through a set of experiments, we demonstrate that these surveys currently use the wrong control and are invalid. In light of our findings, we reflect more generally on the question of whether dilution by blurring ever occurs and on how the blurring cause of action may be reconfigured to better comport with courts’ intuitions about the true nature of the harm that the cause of action seeks to address

Consumer Uncertainty in Trademark Law: An Experimental Investigation

Nearly every important issue in trademark litigation turns on the question of what consumers in the marketplace believe to be true. To address this question, litigants frequently present consumer survey evidence, which can play a decisive role in driving the outcomes of trademark disputes. But trademark survey evidence has often proven to be highly controversial, not least because it has sometimes been perceived as open to expert manipulation. In this Article, we identify and present empirical evidence of a fundamental problem with trademark survey evidence: while the leading survey formats in trademark law test for whether consumers hold a particular belief, they do not examine the strength or the varying degrees of certainty with which consumers hold that belief. Yet as the social science literature has long recognized, the strength with which consumers hold particular beliefs shapes their behavior in the marketplace, and thus it should also shape how trademark disputes play out in the courtroom. Through a series of experiments using the three leading trademark survey formats (the so-called Teflon, Eveready, and Squirt formats), we show the remarkable degree to which these formats as conventionally designed overlook—or suppress—crucial information about consumer uncertainty. We further demonstrate how low-cost, easily administered, and relatively simple modifications to these formats can reveal that information. We explain both the practical and theoretical implications of our findings. As a practical matter, trademark survey evidence that shows only weakly held beliefs (or that does not even test for belief strength) should not, without more, satisfy a litigant’s burden of persuasion on the issue addressed by the survey. Furthermore, in line with courts’ growing efforts in intellectual property cases to tailor injunctive relief, survey evidence showing only weakly held mistaken beliefs may provide courts with the opportunity to fashion more limited forms of relief short of an outright injunction. As a theoretical matter, trademark survey formats that reveal the true extent of consumer uncertainty in the marketplace may finally force trademark law and policy to confront normative questions it has long left unanswered going to exactly what kind of harm trademark law is meant to prevent