ABSTRACT
Both trademark infringement and false advertising are understandable as species of unfair competition, related in that both operate to protect consumers and competitors against distortion in the market caused by misleading information. But they have differing subject matter and often different tests for liability for the same type of claim. In particular, advertisers often want to make comparative claims identifying a particular competitor, whether by name or by some other recognizable characteristic. If these claims are false, no separate principle of trademark law is required to conclude that they should be banned, even if they are neither confusing in the trademark sense nor disparaging. However, if claims such as ‘cheaper than Brand X, but just as effective’ are not false or misleading, then general advertising law allows them – unless trademark law has some separate force in controlling advertising claims that aren’t about the source or sponsorship of the advertiser’s product.
The United States has taken the most aggressive position that general advertising law’s permissiveness towards non-false claims should control in such situations, while other common law countries are more ambivalent. This chapter focuses on the US approach and contrasts it to other common law jurisdictions that give somewhat more solicitude to trademark owners, though always uneasily and without much clarity on the boundaries. In each jurisdiction, trademark law has the potential to complicate an otherwise straightforward advertising law issue centered on the presence or absence of factual falsity. In general, a focus on protecting consumers’ access to useful information would be both simpler and likely more beneficial to society at large than an approach that allows trademark rights to interfere with nondeceptive information.
Tushnet, Rebecca, The False Advertising/Trademark Interface at Common Law (February 18, 2020). Handbook on International and Comparative Trademark Law 335-49 (Irene Calboli and Jane Ginsburg eds, Cambridge Univ. Press, 2020).
First posted 2021-06-12 09:00:15
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