ABSTRACT
Courts and scholars alike conventionally describe trademark rights as inherently limited. By ‘inherently limited’, they mean that the boundaries of trademark rights can be derived from the justifications for those rights, without resort to other competing values. That description is important to both trademark maximalists and minimalists. For the former, appeals to the inherent limits are meant to downplay concerns about broad rights; for the latter, they are meant to reinvigorate the limits.
The claim that trademark rights are inherently limited is undeniably correct in important ways. Nothing is more foundational to trademark law than the notion that trademark rights are not rights in gross – the rights arise out of use in connection with particular goods or services, and they exist only in relation to those goods or services. For that reason, eligibility for trademark protection depends on a claimed mark’s relationship to the goods and services. We determine whether one has a valid mark by asking how much and what kind of information the purported mark provides about the relevant goods or services.
But the question of how limited trademark rights really are depends not only on how we determine the existence of rights; it depends critically on the scope of those rights. And in that respect, modern trademark law is very different from its former self. Once upon a time, trademark owners could enforce their rights only against those in direct competition, so it was literally true that trademark rights existed only in relation to the goods or services with which they were used. But that is history now. For many decades it has been more accurate to say that a party’s rights grow out of its own use but extend to any other uses that are close enough to cause confusion. As a result, the scope of trademark rights has long been dependent on the meaning of likelihood of confusion.
And, of course, the concept of likelihood of confusion has expanded dramatically over time. Modern trademark law recognizes many forms of confusion, in many contexts, about many types of relationships, and at several points in time. Dilution goes even further, giving a cause of action even when there is no plausible argument about confusion of any kind. For many marks, and especially those that are most well-known, the claim that trademark rights exist only in relation to certain goods or services is much more of a slogan than a reality.
That doesn’t mean that trademark rights have become rights in gross in every sense. Courts continue to enforce several important limits, some of which have taken on even greater significance in recent years. But those limits often have a different character than they used to, especially in the US, as courts have struggled to articulate the limits of likelihood of confusion. The consequence is that the former internal limits are less reliable and harder to apply, and some things that used to be easily understood as ‘internal’ limits now look like ‘defenses’ that really take the form of balancing acts.
Increasingly, trademark law’s most important and hardest-edged limits are ‘external’, in the sense that they are superimposed on trademark rights because of concerns that enforcement of those rights will tread on other interests. In particular, courts have been concerned about broader competition values, free speech, and the operation of other intellectual property regimes. To put it somewhat differently, courts are now primarily policing whether trademark law, increasingly unconstrained by its own purposes, is encroaching on some other recognizable values. Trademark’s bucket runneth over, and now it seems that all we can do is guard other buckets.
McKenna, Mark P, Externalizing Trademark’s Limits (April 3, 2022) in Charting Limitations on Trademark Rights, Barton Beebe and Haochen Sun eds (Oxford University Press, forthcoming 2022).
First posted 2022-04-16 12:00:14
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