Grounding Trademark Law Through Trademark Use

The debate over trademark use has become a hot-button issue in intellectualproperty (IP) law. In Confusion over Use: Contextualism in Trademark Law,Graeme Dinwoodie and Mark Janis characterize it as a dispute over whetherto limit trademark holder rights in a new and unanticipated way. Yet thereis another - in our view more historically accurate - way to frame thetrademark use debate: the question is whether courts should, absentspecific statutory authorization, allow trademark holders to assert a newand unprecedented form of trademark infringement claim. The pop-up andkeyword cases involve attempts to impose third-party liability under theguise of direct infringement suits. Dinwoodie and Janis's thorough accountnotwithstanding, it remains the fact that, before the recent spate ofInternet-related cases, no court had ever recognized a trademark claim ofthe sort that trademark holders are now asserting. Trademark infringementsuits have always involved allegations of infringement by parties who usemarks in connection with the promotion of their own goods and services. Thequestion raised by the trademark use cases, as we view it, is whethercourts should countenance a radical departure from that traditional modelwithout specific instruction from Congress. We think they should not.In this paper, we explain the origins of trademark use doctrine intraditional limits on the scope of the trademark right and in thedistinction between direct and contributory infringement. We also explainwhy we cannot simply rely on the likelihood of consumer confusion test tosolve the problems the trademark use doctrine addresses, and we examine thedifficult problem of defining the scope of the trademark use doctrine.