Greg: I agree that the structure of categorical safe harbors in the TDRA has promise, but much of the execution of that idea in the statutory language is horrific. In part that’s because the new language incorporates some concepts, like nominative fair use, that are freighted with lots of problems. Another issue is that we might be more willing to carve out broad exemptions from dilution liability in situations where at least some potential room for traditional infringement liability, in the face of true confusion, might make sense. But, yes, we should talk. Thanks!

Of course I agree that some excesses in the expansion of TM scope should be rolled back. So I don’t quite mean “giving up” on consumer confusion as the rationale.

But marketers and consumers all understand that something called “brand value” exists and that a stringent consumer confusion rationale does not protect it fully. Pragmatically speaking, we are not going to return trademark law all the way back to a place where it no longer covers some of the most valuable assets corporations own. Courts and especially legislators simply won’t go that far. Normatively speaking, I am open to the idea that they shouldn’t do so, at least not completely.

Thus I don’t really see any viable alternative to a future where trademark law moves forward to a different limiting principle (or set of principles, perhaps including confusion among them to some degree).

You suggest: “we probably wouldn’t even need to call whatever new thing we invent ‘trademark law.’” True enough. I think Mark McKenna and others might propose calling it “unfair competition” instead, and drawing on those principles for the future. I certainly don’t claim to have good clear answers about what replaces the current system. But I am pretty sure consumer confusion alone won’t work.

Well, I’m all for rethinking things, but if we’re going to give up on the notion of consumer confusion & passing off, we probably wouldn’t even need to call whatever new thing we invent “trademark law.”

We shouldn’t be surprised that trademark holders aren’t most interested in trying to prevent consumer confusion. Trademark holders, like copyright holders and real property owners, often tend to want rights beyond what the law grants them. The duty of the courts is to listen to defendants when plaintiffs overreach and keep the interests of the consumer and society in mind. For some reason, courts have done a poor job of that in the late twentieth century with regard to limiting the expansion of trademark law.

I compare these type of uses to nominative use, competitors can use TM’s in their adds to compare their features. Although not completely on point, the analogy is close.

Further, compare this to Yellow Pages. The Yellow Pages makes a profit by listing companies by name (TM), should this be disallowed as well.

Although there is currently no good legal reasoning to support my conclusion (thus the struggle of scholars and courts), to find any other way would simply go against equity as our society currently sees it.

Like Mark, I believe the current tethering of trademark law to a boundless definition of consumer confusion is unworkable — I’d say it’s now bordering on incoherent. But the horse has already left the barn on the definition of confusion.

The gigantic problem with modern trademark doctrine is that it pretends to be about confusion when really both markholders and legislators are motivated primarily by the desire to protect brand value. Ready identification of a brand with a source is the first component of a valuable brand, but by no means the last or even the most important. The brand’s identity and message have much more content than that. This motivation drove most or all of the various expansions of “confusion” Greg lists — they are flawed because they aren’t really about confusion at all.

I tend to think the answer lies, not in trying to roll back the clock to any earlier and narrower conception of confusion, but to rethink the rationale of trademarks altogether. That project, however, may take just a little while… In the meantime, I’m advocating stronger defenses to respond to excesses in enforcement on the back end rather than narrowing the scope of protection on the front end, as a mechanism more likely to succeed and also more honest about the nature of the underlying problem.

Is your new paper posted somewhere? I’d like to see where you’re going with this…