Mark P. McKenna (Saint Louis University – School of Law; Notre Dame Law School) has posted Trademark Use and the Problem of Source in Trademark Law on SSRN. Here is the abstract:
This paper mediates a scholarly debate regarding the existence and desirability of a trademark use doctrine. It argues that trademark use is a predicate of liability under the Lanham Act, but those who advocate treating trademark use as a threshold question put much more weight on that concept than it can bear. Courts cannot consistently apply trademark use as a distinct element of the plaintiff’s prima facie case because trademark use is not separable from the question of likelihood of confusion. Under modern trademark law, courts can determine whether a defendant has made trademark use of a plaintiff’s mark only by asking whether consumers are likely to view the defendant’s use as one that indicates the source of the defendant’s products or services. Because such an inquiry is, by its nature, highly context-sensitive, trademark use is not a concept capable serving the limiting function advocates hope. The trademark use debate, however, reveals a fundamental problem in modern trademark law and theory. Consumer understanding, and particularly consumer understanding of source, defines virtually all of modern trademark law’s boundaries. But as trademark law’s dramatic expansion aptly demonstrates, these boundaries are never fixed because consumer understanding is inherently unstable, particularly with respect to an ill-defined term like source.
And a bit more from the text:
The important point here is that, because trademark use can be determined only from the perspective of consumers, it cannot serve as a threshold requirement separable from the likelihood of confusion inquiry. A determination that the defendant’s use indicates the source of its products or services is a necessary part of every likelihood of confusion finding. Moreover, in most of the types of cases trademark use advocat es have identified as candidates for application of the doctrine, the determination that the defendant’s use of the plaintiff’s mark indicates source is essentially dispositive: by reaching its conclusion on trademark use, the court has already considered much of the evidence it will need to evaluate to make a finding on likelihood of confusion. There is little dispute in the search engine cases, for example, that the defendant is using a term that consumers recognize as the plaintiff’s trademark.168 The dispute is about how the defendant is using that mark. Consequently, as Dogan and Lemley concede, similarity of the marks is unlikely to be contested.169 Likewise, if consumers recognize the term used by the defendant as a trademark of the plaintiff and also believe the defendant is using the term to indicate the source of its own goods or services, it is a short step to concluding the goods or services are sufficiently similar that the entities might be related in some way. Indeed, the respective parties’ goods and services are very likely to be considered in determining whether the defendant’s use indicates source.
Nicely argued & recommended!