ABSTRACT
Contemporary business has challenged the legal view of trademarks, and courts have tried to align this reality with the law. One of the purported solutions to this new challenge is formulating a ‘trademark use’ doctrine. This thesis analyses the ‘trademark use’ doctrine, contending that its application lacks foundation in both legislative history and statutory language. It challenges the doctrine’s continued relevance in light of contemporary commercial realities.
The article argues that ‘trademark use’, as conceptualised, fails to present any meaningful innovation in addressing current trademark conflicts. Rather, its rigid, formalistic approach is at odds with modern commerce. It also posits that strict adherence to the doctrine does not improve courts’ capacity to resolve disputes in a way that appropriately balances the competing interests of trademark owners and the public. Instead, the likelihood of confusion (LoC) test, long entrenched in US trademark jurisprudence, and fair use serve as a more flexible and effective mechanism for resolving disputes. The article concludes by stating that the focus on ‘trademark use’ is mainly superfluous and may impede the efficient resolution of disputes, undermining economic efficiency and free expression. Courts can achieve the necessary balance by applying the LoC tests and fair use doctrine. These existing frameworks are sufficiently adaptable to address the nuanced demands of modern commerce. The article suggests the need for further empirical research on courts’ responses to novel and borderline cases to understand the judicial attitude toward ‘trademark use’ and why the doctrine has not delivered on all its promises.
Onah, Adanna and Onah, Adanna, Trademark Use in Flux: Bridging Legal Doctrine and Commercial Realities (September 19, 2024).
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