MCKENNA.DOC4/21/2009 1:25 PMTRADEMARK USE AND THE†PROBLEM OF SOURCEMark P. McKenna*This Article mediates a scholarly debate regarding the existenceand desirability of a “trademark use” doctrine. It argues that trademark use is a predicate of liability under the Lanham Act, but thosewho advocate treating trademark use as a threshold question putmuch more weight on that concept than it can bear. Courts cannotconsistently apply trademark use as a distinct element of the plaintiff’sprima facie case because trademark use can be determined only fromthe perspective of consumers. Specifically, courts can determinewhether a defendant has made trademark use of a plaintiff’s mark only by asking whether consumers are likely to view the defendant’s useas 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 of serving the limiting function advocates hope. The trademark use debate, however, reveals afundamental 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 these boundaries are never fixed because consumer understanding is inherently unstable, particularly with respect to an ill-definedterm like “source.”I.INTRODUCTION“Trademark use” is all the rage. Several scholars recently have puttheir faith in the trademark use doctrine as a tool for defining the boun-† 2009 Mark P. McKenna. Individuals and nonprofit institutions may reproduce and distribute copies of this Article in any format, at or below the cost of reproduction, for educational purposes, so long as each copy identifies the author, provides a citation to the University of Illinois Law Review, and includes this provision and copyright notice.* Associate Professor of Law, Notre Dame Law School. This Article benefited from feedbackI received at the Seventh Annual Intellectual Property Scholars Conference at DePaul University College of Law and at the Works-in-Progress Intellectual Property Colloquium at American University,Washington College of Law. I received particularly helpful comments from Barton Beebe, Dan Burk,Tom Cotter, Graeme Dinwoodie, Stacey Dogan, Brett Frischmann, Jim Gibson, Eric Goldman, LauraHeymann, Greg Lastowka, Mark Lemley, Bill McGeveran, Rebecca Tushnet, Polk Wagner, andChristopher Yoo.773
MCKENNA.DOC7744/21/2009 1:25 PMUNIVERSITY OF ILLINOIS LAW REVIEW[Vol. 2009daries of trademark law, and particularly as an antidote to the “new andunprecedented form[s] of trademark infringement claim[s]” trademarkowners have asserted against information intermediaries and creators ofexpressive works.1 These scholars argue that only certain types of uses ofanother’s mark—trademark uses—can constitute infringement, and thatcourts can predictably limit the scope of trademark rights by emphasizingtrademark use as an essential element of infringement.2 Even better,these scholars suggest, courts can determine early in litigation whether aparticular use is trademark use, and therefore can resolve at least somecases without getting bogged down in the unpredictable, contextdependent likelihood of confusion analysis.3 On this account, not onlydoes the trademark use doctrine help resolve particularly hard cases, italso limits the amount of feedback in trademark law by giving potentialdefendants greater certainty about the legality of their uses.4The trademark use doctrine is seductive because it promises predictable limits on the scope of trademark rights, and limits of any kindhave proven remarkably elusive in modern trademark law. Moreover,1. See Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law Through TrademarkUse, 92 IOWA L. REV. 1669, 1674 (2007) (arguing that “the trademark use doctrine, properly applied,serves as a limited tool for identifying classes of behavior that cannot constitute infringement”); seealso Margreth Barrett, Internet Trademark Suits and the Demise of “Trademark Use,” 39 U.C. DAVISL. REV. 371, 395–96 (2006) (“In the course of evaluating infringement and dilution claims in this newand unique setting [on the Internet], courts have too often lost sight of the important limiting functionthe trademark use requirement should play.”); Eric Goldman, Deregulating Relevancy in InternetTrademark Law, 54 EMORY L.J. 507, 593–94 (2005) (finding a trademark use requirement in the Lanham Act and arguing for rigorous application of the doctrine to immunize search providers from liability); Uli Widmaier, Use, Liability, and the Structure of Trademark Law, 33 HOFSTRA L. REV. 603, 708(2004) (arguing that “the misinterpretation of the trademark use requirement—or more accurately,the flat-out disregard of that requirement—has given rise to a veritable cottage industry among thecourts, an entire line of cases that are wrongly decided, that impose trademark infringement liabilitywhere none exists”).2. Barrett, supra note 1, at 395–96; Dogan & Lemley, supra note 1, at 1670–72. This is not purely an academic argument; defendants increasingly are making trademark use arguments to courts.Google articulated this position in its brief to the Second Circuit in Rescuecom Corp. v. Google, Inc.,arguing thatbootstrapping a finding of use by alleging other elements of a trademark claim, such as likelihoodof confusion, puts the cart before the horse. Just as a plaintiff in a negligence case cannot claimthat the allegation that she fell and broke her arm shows that the defendant breached the applicable duty of care, Rescuecom cannot claim that the allegation of a likelihood of confusion showsthat Google engaged in trademark use.Brief for Defendant-Appellee at 12–13, Rescuecom Corp. v. Google, Inc., No. 06-4881-cv (2d Cir. Feb.12, 2007), available at http://claranet.scu.edu/eres/coursepage.aspx?cid 1754&page docs# [hereinafterGoogle Brief] (follow “Google’s Appellee Brief in Rescuecom v. Google” hyperlink).3. Dogan & Lemley, supra note 1, at 1695–96.4. Consumer expectations largely define trademark rights, yet those expectations are influenced by consumers’ understanding (or misunderstanding) of the law. See, e.g., Dogan & Lemley, supra note 1, at 1696 (arguing that, because litigation is costly and uncertain, many people who have theright to make a particular use will not, which “in turn may actually affect consumer perceptions ofwhether such uses are permissible at all”); James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 YALE L.J. 882, 907 (2007); Mark P. McKenna, The Normative Foundationsof Trademark Law, 82 NOTRE DAME L. REV. 1839, 1916 (2007) (arguing that “once courts and Congress began to expand trademark law and committed it to consumer understanding, expansion becameself-reinforcing—broader protection begets consumer expectations of greater control, which begetseven broader protection”).
MCKENNA.DOCNo. 3]4/21/2009 1:25 PMTRADEMARK USE AND THE PROBLEM OF SOURCE775the language of trademark use seems familiar to trademark scholars, astrademark law has long limited liability to certain types of uses of another’s mark that are colloquially referred to as “trademark uses.” The limits trademark use advocates propose therefore appear to follow naturallyfrom trademark law’s own policies rather than external forces like theFirst Amendment. Indeed the doctrine is sufficiently attractive to enjoyrelatively widespread support among intellectual property scholars.5Unfortunately, while they advance the trademark use doctrine as atool for creating predictability, none of the doctrine’s advocates is able toarticulate clear rules by which courts can distinguish trademark uses fromnon-trademark uses. Dogan and Lemley, for example, do not specificallydefine trademark use but focus on uses “to promote [a party’s] ownproducts or services” or “to indicate the source or sponsorship of [theparty’s] products or services.”6 This type of definition is the best we canhope for because the only trademark use limitation in the Lanham Act isa functional one: the infringement provisions implicitly limit liability touses by the defendant that indicate the source of its products or services.But such a functional trademark use limitation cannot predictably limitliability because it cannot be determined without resort to consumer understanding.7 Specifically, under modern trademark law, courts can findthat a defendant has made trademark use of a plaintiff’s mark only if the5. In addition to the academic articles noted above, law professors have authored and signedamicus briefs arguing for recognition of trademark use as a threshold determination and have testifiedbefore Congress to stress the importance of the doctrine. See Brief of Amici Curiae Intellectual Property Law Faculty in Support of Affirmance, Rescuecom Corp. v. Google, Inc., No. 06-4881-cv (2d Cir.Feb. 22, 2007), available at http://claranet.scu.edu/eres/coursepage.aspx?cid 1754&page docs# (follow“Rescuecom v. Google Law Professors Amicus Brief” hyperlink); Trademark Dilution Revision Act of2005: Hearing on H.R. 683 Before the Subcomm. on Courts, the Internet, and Intellectual Property ofthe H. Comm. on the Judiciary, 109th Cong. 18–21 (2005) (statement of Mark A. Lemley, William H.Neukom Professor of Law, Stanford Law School). This enthusiasm is not universal, however. Responding particularly to Dogan and Lemley, Graeme Dinwoodie and Mark Janis have rejected thetrademark use doctrine both descriptively and prescriptively. Graeme Dinwoodie & Mark Janis, Confusion over Use: Contextualism in Trademark Law, 92 IOWA L. REV. 1597 (2007). I address many ofDinwoodie and Janis’s arguments throughout this Article.6. Dogan & Lemley, supra note 1, at 1682. Margreth Barrett does advocate for the formal understanding, at least to some extent. Barrett, supra note 1, at 379–87.7. Ironically, the very cases that have animated most scholars’ advocacy of a trademark usedoctrine—the keyword advertising cases—have come to strikingly different conclusions as to whetherthe trademark use doctrine exists and whether use of another’s mark in keyword advertising constitutes trademark use in commerce. Compare Buying for the Home, LLC v. Humble Abode, LLC, 459F. Supp. 2d 310, 323 (D.N.J. 2006) (holding keyword use by advertisers constitutes trademark use incommerce), and Edina Realty, Inc. v. TheMLSonline.com, No. Civ. 04-4371JRTFLN, 2006 WL737064, at *3 (D. Minn. Mar. 20, 2006) (same), with Merck & Co. v. Mediplan Health Consulting, Inc.,425 F. Supp. 2d 402, 416 (S.D.N.Y. 2006) (holding keyword use is not trademark use in commerce);compare Washingtonpost.Newsweek Interactive Co. v. Gator Corp., No. Civ. A. 02-909-A, 2002 WL31356645, at *1 (E.D. Va. July 16, 2002) (holding use of keywords to trigger adware constitutes trademark use in commerce), with 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 412 (2d Cir. 2005)(holding use of keywords to trigger adware is not trademark use in commerce), Wells Fargo & Co. v.WhenU.com, Inc., 293 F. Supp. 2d 734, 764 (E.D. Mich. 2003) (same), and U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723, 729 (same).
MCKENNA.DOCNo. 3]4/21/2009 1:25 PMTRADEMARK USE AND THE PROBLEM OF SOURCE777ing under such a belief, consumers who encountered an article in theNew York Times entitled “Nike Releases New Cross-Training Line”might well expect that the New York Times had licensed use of the Nikemark.12 If the newspaper did not license use of the Nike mark, these consumers would be confused about Nike’s sponsorship of or affiliation withthe New York Times,13 and the paper’s use would therefore infringeNike’s rights.Uses in newspaper headlines generally have not been thought to infringe trademark rights, not because of a trademark use doctrine, but only because courts have presumed that consumers do not regard such usesas source indicative.14 Whether such a presumption historically has beenjustifiable, it becomes more questionable every day as consumers become more aware of marketing practices, such as product placement,that blur the line between advertising and content. Yet the presumptionthat consumers do not perceive uses in headlines as source indicative isthe only reason, under modern trademark principles, that the New YorkTimes would evade liability for its hypothetical use. If and when consumers begin expecting that newspapers license use of trademarks, therewill be no principled trademark reason to refuse to expand liability accordingly.15The remainder of this Article proceeds as follows. First, becausetrademark use advocates and critics alike claim for their view better historical footing, I describe in Part II the role of “use” in traditional trademark law. I argue that, while most traditional use precedent is anachronistic, courts did limit liability to uses of a mark to indicate the source ofone’s goods or services. In this sense, courts did require trademark useas a condition of liability. This functional trademark use limitation wasmeaningful because courts in the traditional era conceived of “source”literally—only uses that caused confusion regarding the actual, historicalsource of a good were actionable.I argue in Part III that the modern Lanham Act continues implicitlyto condition liability on “trademark use” in this functional sense, as onlysource-designating uses can cause relevant confusion. Unfortunately, asI argue in Part IV, one can determine whether a particular use indicatesagreed otherwise in writing with Google, nothing in the Terms gives you a right to use any of Google’strade names, trade marks, service marks, logos, domain names, and other distinctive brand features.”).12. If the statistics Jim Gibson cites are at all representative, such an expectation of licensed useis entirely realistic. See Gibson, supra note 4, at 924 (citing a 1983 study in which 91.2 percent of respondents agreed that “[n]o product can bear the name of an entertainer, cartoon character, or someother famous person unless permission is given for its use by the owner of the name or character”).13. Of course consumers in this situation may not care whether the use was licensed. But trademark law has no materiality element; liability does not depend on consumers caring.14. See, e.g., Packman v. Chi. Tribune Co., 267 F.3d 628, 640 (7th Cir. 2001) (describing the Chicago Tribune’s use of “The joy of six” as a newspaper headline in contradiction to a trademark).15. Courts might well be reluctant to impose liability in such cases, and particularly to issue injunctive relief. Any limitations, however, would have to come from the force of the First Amendment.Trademark theory offers no reason to limit liability in such a case, committed as it is to protecting consumer understanding.
MCKENNA.DOC7784/21/2009 1:25 PMUNIVERSITY OF ILLINOIS LAW REVIEW[Vol. 2009source, and therefore qualifies as a trademark use, only by reference toconsumer understanding. This is a problem, as I argue in Part V, because“source” in modern trademark law is a much broader concept than it wasin the traditional era, and one without any natural limits. Consequently,trademark use can no longer exert whatever limiting influence it oncedid. To develop sustainable boundaries, courts will therefore have to divorce the scope of trademark rights from consumer understanding in atleast some circumstances and/or define relevant source relationships withgreater specificity. I offer some tentative suggestions along these lines inPart VI.II. THE ROLE OF USE IN TRADITIONAL TRADEMARK DOCTRINEThis Part describes the role of trademark use in traditional trademark law, specifically during the nineteenth and early twentieth centuries, when trademark law developed in America.16 Focusing on this bygone era is important for two reasons. First, both advocates and critics ofthe trademark use doctrine make historical claims to bolster their arguments. Advocates argue that courts have always required trademark useas a condition of liability and that the trademark use requirement hastraditionally served as a bulwark against overly expansive trademarkprotection.17 Because of the doctrine, they suggest, a grocery store canplace generic sodas on the shelf next to Coca-Colas, and content creatorscan reference trademarks for purposes of criticism or parody without incurring liability.18 Critics of the trademark use doctrine, on the otherhand, “find no foundation for the theory in current U.S. trademark law”19and deem historical arguments in favor of the doctrine unavailing. Infact, the critics suggest history casts serious doubt on the claim that atrademark use doctrine will promote certainty.20 To evaluate these competing arguments, one must understand the context of traditional doctrinal rules and their evolution during the twentieth century.Second, and more importantly for this Article, revisiting earlytrademark decisions draws out the stark contrast between courts’ traditional conception of “source” and the much more expansive modern understanding of that concept. Focusing on the way courts broadened theconcept of source makes clear why a functional trademark use requirement can no longer be the robust limitation it once might have been.16. See McKenna, supra note 4, at 1858–73.17. See Barrett, supra note 1, at 376–87; Dogan & Lemley, supra note 1, at 1675 (“The recenttrademark use decisions, therefore, are simply articulating and refining a longstanding principle oftrademark law that finds support in both the Lanham Act and relevant case law, a principle that was,until recently, so widely accepted that trademark owners never sought to challenge it.”).18. Dogan & Lemley, supra note 1, at 1672.19. Dinwoodie & Janis, supra note 5, at 1602, 1622.20. Id. at 1607.
MCKENNA.DOCNo. 3]A.4/21/2009 1:25 PMTRADEMARK USE AND THE PROBLEM OF SOURCE779Use Requirements in Traditional Trademark Law and TheoryTrademark rights traditionally have been defined by a party’s use.One acquires rights in a mark through use of the mark in connection withparticular goods or services, and priority as between competing users isdetermined by first use.21A party’s use of a mark also delineates the scope of that party’srights. Traditionally, one’s rights in a mark extended only to the specificgoods or services with which the mark was used.22 Consequently, onlyuses by direct competitors were deemed infringing.23 Trademark rightsare no longer so restricted, but a senior party’s use of its mark continuesto play an anchoring role. Uses of a mark for noncompeting goods mayinfringe if they are likely to cause confusion, and the similarity of the parties’ respective goods or services plays a prominent role in the confusionanalysis.24“Use” in this context refers to a particular type of use, however, andnot simply any use of a term or device in connection with a party’s goodsor services. Specifically, for “use” of a term to trigger substantive trademark rights, a party must use the term in such a manner that consumersregard it as indicative of the source of that party’s goods or services.25These use rules have deep historical roots,26 and they continuelargely to determine trademark rights today.27 Because trademark law’suse rules were primarily created during the nineteenth century, however,the role of use in trademark law must be understood in the context ofcourts’ understanding of the normative goals of trademark and unfaircompetition law during that period.21. 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 2:9(4th ed. 2008).22. McKenna, supra note 4, at 1888.23. See id. at 1889.24. Every federal circuit court applies its own multifactor test of likelihood of confusion to determine liability. There is, however, significant overlap between the various tests, and every circuitincludes factors that measure the similarity of the goods or services. Most also consider the likelihoodthat the plaintiff would expand its offerings to the defendant’s market. See 4 MCCARTHY, supra note21, §§ 24:30–:43 (setting forth each circuit’s multifactor test).25. See McKenna, supra note 4, at 1892–93.26. See, e.g., Am. Washboard Co. v. Saginaw Mfg. Co., 103 F. 281, 287 (6th Cir. 1900) (“It is theparty who uses [a designation] first as a brand for his goods, and builds up a business under it, who isentitled to protection, and not the one who first thought of using it on similar goods, but did not use it.The law deals with acts, not intentions.” (quoting George v. Smith, 52 F. 830, 832 (C.C.S.D.N.Y.1892))).27. One qualification is necessary here. Since 1988 parties have been able to apply to registertrademarks prior to making actual use as long as they have a bona fide intention to use the mark. SeeLanham Act § 1(b), 15 U.S.C. § 1051(b) (2006). If such applications issue to registration, their ownerscan claim constructive use of the registered mark from the date of application. Id. § 7(c). But sinceintent to use applications cannot mature into registration unless the applicant can demonstrate actualuse within the statutorily prescribed period, even rights acquired through intent-based registrationsultimately depend on actual use of a mark. Id. § 1(d) (requiring statement of use to be filed withinstatutory period following notice of allowance).
MCKENNA.DOC7804/21/2009 1:25 PMUNIVERSITY OF ILLINOIS LAW REVIEW[Vol. 2009Notably, traditional trademark law’s focus on use is difficult to explain in terms of the modern search costs theory of trademark law. First,contrary to the conventional claim, advanced by Dinwoodie and Janis,28use is neither a necessary nor sufficient determinant of consumer understanding. Here I mean to suggest that a party need not have made anyuse of a term for consumers to associate the term with that particularparty, but it is particularly clear that consumer understanding does notdepend on any formal aspects of use like affixation.29 In fact, as courtshave increasingly embraced the search costs theory of trademark law,they have sometimes relaxed the use rules and recognized a party’s rightsin a mark even when that party had never itself made any use of themark.30 At the same time, actual use of a trademark in a way typicallydeemed sufficient to support an application does not guarantee that consumers will associate a term with its first user; the nature of one’s usetells us nothing about consumer response to the mark.It is ironic then that the trademark use doctrine is promoted so vigorously by vocal advocates of the search costs theory.31 Applied woodenly, use rules almost certainly will produce results in some cases thatare inconsistent with consumer expectations. That would not have bothered courts applying traditional trademark principles because thosecourts did not seek to protect consumer understanding for its own sake.But use rules that are insensitive to actual consumer understanding standin tension with a search costs theory of trademark law.28. See Dinwoodie & Janis, supra note 5, at 1626.29. As Rebecca Tushnet notes, “As far as we know, the brain has no use-in-commerce requirement or other distinction that would keep references to Tiffany-the-girl from activating thoughts ofTiffany’s-the-jeweler, or vice versa.” Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Lawand Cognitive Science, 86 TEX. L. REV. 507, 549 (2008).30. In a variety of cases, courts have recognized trademark rights in abbreviations or nicknamesused exclusively by the public. See Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d1572, 1577–78 (Fed. Cir. 1991) (“Moreover, even without use directly by the claimant of the rights, thecourts and the Board generally have recognized that abbreviations and nicknames of trademarks ornames used only by the public give rise to protectable rights in the owners of the trade name or markwhich the public modified. Such public use by others inures to the claimant’s benefit and, where thisoccurs, public use can reasonably be deemed use ‘by’ that party in the sense of a use on its behalf.”(footnote omitted)); see also Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 434 (7thCir. 1999) (quoting Nat’l Cable Television, 937 F.2d at 1577); Volkswagenwerk AG v. Hoffman, 489 F.Supp. 678, 681 (D.S.C. 1980) (recognizing VW’s rights in “Bug” based on public usage of the nicknamewithout VW’s protest); Coca-Cola Co. v. Busch, 44 F. Supp. 405, 407 (E.D. Pa. 1942) (finding the public use of “Coke” to refer to Coca-Cola’s soft drink sufficient to create rights for Coca-Cola in thatterm); Am. Stock Exch., Inc. v. Am. Express Co., 1980 WL 30139, at *362–64 (T.T.A.B. June 30, 1980)(attributing to American Express rights in “AMEX” based on public use of that designation to denoteAmerican Express); Norac Co. v. Occidental Petroleum Corp., 1977 WL 22645, at *315 (T.T.A.B. Dec.15, 1977) (earlier use of “OXY” by public determined priority); Pieper v. Playboy Enters., 1973 WL19991, at *320 (T.T.A.B. June 14, 1973) (recognizing Playboy’s rights in “Bunny Club”).31. Dogan and Lemley in particular have pressed the search costs rationale. See Dogan & Lemley, supra note 1, at 1689; Stacey L. Dogan & Mark A. Lemley, A Search-Costs Theory of LimitingDoctrines in Trademark Law, 97 TRADEMARK REP. 1223 (2007); Stacey L. Dogan & Mark A. Lemley,The Merchandising Right: Fragile Theory or Fait Accompli?, 54 EMORY L.J. 461, 466–67 (2005) [hereinafter The Merchandising Right]; Stacey L. Dogan & Mark A. Lemley, Trademarks and ConsumerSearch Costs on the Internet, 41 HOUS. L. REV. 777 (2004).
MCKENNA.DOCNo. 3]4/21/2009 1:25 PMTRADEMARK USE AND THE PROBLEM OF SOURCE781The following Section looks closely at the concept of “trademarkuse” in two areas of traditional trademark law: (1) the use necessary toestablish trademark rights, and (2) the types of uses that were deemedinfringing. As this Section demonstrates, the vast majority of “use” casesfrom this era focused on the question of whether a claimed designationfunctioned as a trademark, indicating the source of the claimant’s goodsor services.32 For this reason alone, traditional trademark use precedenthas limited value in the modern trademark use debate. As Dinwoodieand Janis
774 UNIVERSITY OF ILLINOIS LAW REVIEW [Vol. 2009 daries of trademark law, and particularly as an antidote to the "new and unprecedented form[s] of trademark infringement claim[s]" trademark owners have asserted against information intermediaries and creators of expressive works.1 These scholars argue that only certain types of uses of