Irrelevant Confusion

Mark A. Lemley & Mark McKenna

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In 2006, thousands of soccer fans showed up to the World Cup game between the Netherlands and the Ivory Coast wearing pants in the colors of the Dutch national team. The pants had been given out as promotional gifts by a beer company. FIFA, the governing body of international soccer, objected. It claimed trademark rights in the team colors, and giving out pants in those colors was in FIFA’s view “ambush marketing” that was likely to confuse those who saw (or even those who wore) the pants into thinking that the soccer team had sponsored the pants. And in FIFA’s view, not only was giving out the pants illegal, but individuals wearing them were falsely suggesting some affiliation with the Dutch national team. Prohibited from wearing the pants into the stadium, more than one thousand fans dutifully took their pants off and cheered the Dutch team to victory in their (largely orange) underwear. This was Europe, after all, and it was an important match.

Pantsless soccer fans (and those sitting next to them) are far from the only victims of the broad modern conception of sponsorship or affiliation confusion. In 2008, Major League Baseball began to crack down on the longstanding practice by local Little Leagues of naming kids’ baseball teams after major league franchises. MLB’s theory was that people watching the twelve-year-olds play for the Tinley Park Cubs would wrongly assume that the Chicago Cubs had granted permission to or otherwise sponsored their eponymous Little League counterparts. Faced with the prospect of suit, Little League teams everywhere began renaming their teams.

In 2006, back when it was good, NBC’s hit show Heroes depicted an indestructible cheerleader sticking her hand down a kitchen garbage disposal and mangling it (the hand quickly regenerated). It was an Insinkerator brand garbage disposal, though you might have had to watch the show in slow motion to notice; the brand name was visible for only a couple of seconds. Emerson Electric, owner of the Insinkerator brand, sued NBC, alleging the depiction of its product in an unsavory light was both an act of trademark dilution and was likely to cause consumers to believe Emerson had permitted the use. NBC denied any wrongdoing, but it obscured the Insinkerator name when it released the DVD and web versions of the episode. And not just television shows but also movies have provoked the ire of trademark owners: Caterpillar sued the makers of the movie Tarzan on the theory that the use of Caterpillar tractors in the movie to bulldoze the forest would cause consumers to think Caterpillar was actually anti-environment. Even museums aren’t immune: Pez recently sued the Museum of Pez Memorabilia for displaying an eight-foot Pez dispenser produced by the museum’s owners.

Most of these examples involve threats of suit, and they could be dismissed simply as overreaching by a few aggressive trademark owners. But these threats were not isolated incidents, and they shouldn’t be quickly ignored. The recipients of all of these threats, like many others who receive similar objections, knew well that they had to take the asserted claims seriously because courts have sometimes been persuaded to shut down very similar uses. In 1998, for instance, New Line Productions was set to release a comedy about a beauty pageant that took place at a farm-related fair in Minnesota. New Line called the movie Dairy Queens but was forced to change the name to Drop Dead Gorgeous after the franchisor of Dairy Queen restaurants obtained a preliminary injunction. Likewise, the Mutual of Omaha Insurance Company persuaded a court to stop Franklyn Novak from selling T-shirts and other merchandise bearing the phrase “Mutant of Omaha” and depicting a side view of a feather-bonneted, emaciated human head. No one who saw Novak’s shirts reasonably could have believed Mutual of Omaha sold the T-shirts, but the court was impressed by evidence that approximately ten percent of all the persons surveyed thought that Mutual of Omaha “[went] along” with Novak’s products.1

The Heisman Trophy Trust prevented a T-shirt company called Smack Apparel from selling T-shirts that used variations of the word HEISMAN, such as “HE.IS.the.MAN,” to promote particular players for the Heisman Trophy. This was not Smack Apparel’s first trademark lesson: a court previously ordered it to stop selling T-shirts that used university colors and made oblique references to those universities’ football teams because the court believed the designs created “a link in the consumer’s mind between the T-shirts and the Universities” and demonstrated that Smack Apparel “inten[ded] to directly profit [from that link].”2 A street musician who plays guitar in New York while (nearly) naked was permitted to pursue his claim against Mars on the theory consumers would assume he sponsored M&Ms candies, since Mars advertised M&Ms with a (naked) blue M&M playing a guitar. Amoco persuaded a court that consumers might believe it sponsored Rainbow Snow’s sno-cones, mostly because Rainbow Snow’s shops were located in the same area as some of Amoco’s Rainbo gas stations. The National Football League successfully sued the state of Delaware for running a lottery based on point spreads in NFL games, even though the lottery never used the NFL name or any of its marks for the purpose of identifying or advertising its games. The court was persuaded that the betting cards’ references to NFL football games by the names of the cities whose teams were playing might cause consumers to believe the NFL sponsored the lottery game. And the owners of a Texas golf course that replicated famous golf holes from around the world were forced to change their course because one of the holes was, in the view of the Fifth Circuit, too similar to the corresponding South Carolina golf hole it mimicked.

Whatever fraction of the total universe of trademark cases these cases constitute, there are enough of them that recipients of cease and desist letters from mark owners have to take the objections seriously. Indeed many simply cave in and change their practices rather than face the uncertainty of a lawsuit. The producers of the TV show Felicity changed the name of the university attended by characters on the show after New York University, the school originally referenced, objected to the depiction of those students as sexually active. The producers of a movie originally titled Stealing Stanford changed the title of their movie to Stealing Harvard after Stanford University objected to the movie’s storyline, which centered on a student who stole money to pay tuition. It’s possible that the producers of the show and the movie would have had legitimate defenses had they decided to use the real universities’ names despite the objections, but in light of the case law outlined above, neither was willing to defend its right to refer to real places in their fictional storylines. Anecdotes like these are becoming depressingly common.

Trademark law centers its analysis on consumer confusion. As a general matter, this is the right rule. When it works well, trademark law facilitates the workings of modern markets by permitting producers to accurately communicate information about the quality of their products to buyers, thereby encouraging them to invest in making quality products, particularly in circumstances in which that quality wouldn’t otherwise be apparent. Unfortunately, as the cases above illustrate, trademark law has taken the concept of confusion too far.

In all of the cases we described above courts found actionable confusion notwithstanding the fact that consumers couldn’t possibly have been confused about the actual source of the defendants’ products. No one could think Dairy Queen had produced a beauty pageant comedy film, the Chicago Cubs were playing Little League baseball, or the coastal golf course they played in South Carolina had moved to the Texas plains. And while it is possible that some consumers would think a soccer team was selling pants with a beer logo on them, the South Carolina golf course had opened a new branch in Texas in cooperation with the seventeen other golf courses the Texas course also mimicked, or Louisiana State University was selling T-shirts that read “Beat Oklahoma” and “Bring it Back to the Bayou!” (but which lacked the LSU name or logo), the plaintiffs in those cases either couldn’t or didn’t try to prove any such source confusion. And under modern law, they didn’t have to.

The actionable confusion, according to these courts, was not confusion that would have led consumers to buy the wrong product, or even to wrongly think they were buying from the trademark owner. Rather, the theory in all of these cases was that consumers would think there was some relationship between the trademark owner and the defendant based on the defendant’s use of the trademark.

These cases are far removed from trademark law’s traditional core, in which courts found infringement only when the defendant caused confusion about the “source of origin” of its products, and they interpreted “source of origin” quite literally. Since consumers in the nineteenth century were accustomed to encountering only a limited range of products from any particular producer, they were unlikely to believe that unrelated goods—even ones bearing the same or a similar mark—came from the same source. Thus a liability standard that required evidence of confusion as to source of origin was essentially equivalent to asking whether confusion would result in trade diversion.

But this tight fit between the requirement of source confusion and the focus on trade diversion depended critically on the assumption that consumers would not think unrelated goods came from the same source. That assumption became increasingly problematic in the early- to mid-twentieth century as producers began serving much wider geographic and product markets. Consumers were more frequently exposed to producers selling a variety of goods (or at least a wider variety), just as they were beginning to understand that companies didn’t always themselves produce the products that bore their marks.

These new market dynamics put significant pressure on the traditional doctrinal structure because confusion about source of origin was no longer a perfect proxy for trade diversion if consumers believed producers made a variety of products.  Over the middle part of the twentieth century, therefore, courts expanded the range of actionable confusion beyond confusion over the actual source of a product—trademark law’s traditional concern—to include claims against uses that might confuse consumers about whether the trademark owner sponsors or is affiliated with the defendant’s goods. To capture a broader range of conduct, courts began to find confusion actionable when it caused consumers to think either (1) that the plaintiff actually produced the defendant’s goods or (2) that the plaintiff somehow sponsored the defendant’s goods or was affiliated with their producer. In Vogue Co. v. Thompson-Hudson Co., for example, the court held that the defendant’s use of “The Vogue Hat Company” to sell hats infringed Vogue’s rights in the Vogue mark for magazines because “[the] course of conduct by the defendant manufacturer and its retailers created a very common alternative impression—first, that these hats were manufactured by the plaintiff; or, second, that, although some knew that plaintiff was not manufacturing, yet these hats were in some way vouched for or sponsored or approved by the plaintiff.”3

This expansion began for plausible reasons: consumers might be confused to their detriment in at least some cases in which the plaintiff and the defendant do not actually compete directly. Courts sometimes acknowledged that, by recognizing confusion regarding sponsorship or affiliation as actionable, they were broadening the scope of unfair competition law. Yet most appear to have regarded that expansion as unremarkable; the cases reflect no significant reservations about expanding trademark law to cover noncompetitive goods. This was, however, unmistakably a significant change, and it was this change that opened the door to all of the extreme claims we cataloged above. As those cases indicate, sponsorship and affiliation confusion has taken on a life of its own, leading courts to declare infringing a variety of practices that might be confusing in some sense, but that do not affect consumers’ decision-making process.

We think it’s time for courts to jettison the “sponsorship or affiliation” construct altogether.  This is not to say that all of trademark law’s expansion beyond competing products was unjustified. To the contrary, we think, as we explain further below, that trademark rights ought to extend far enough to cover uses that confuse consumers about who is ultimately responsible for the quality of the defendant’s goods or services. Some of those cases will be situations where consumers may not believe the plaintiff actually produced the goods or services at issue but nevertheless believe the plaintiff has played a role in guaranteeing quality. Take, for example, the facts of a prototypical trademark infringement case, Borden Ice Cream Co. v. Borden’s Condensed Milk Co., in which Borden (the condensed milk company) alleged that the defendant’s use of the BORDEN mark for ice cream infringed its rights in BORDEN for milk and related products. If Borden sells ice cream, but not other milk products, the use by a defendant of the BORDEN mark on, say, condensed milk won’t actually cause Borden to lose a sale; they don’t sell condensed milk. But it is quite plausible that consumers will assume the Borden’s that makes condensed milk is the same Borden’s that makes ice cream.

Two arguments conventionally have been used to support the view that trademark law should prevent parties from creating such misimpressions. First is a quality feedback argument: Borden’s (the condensed milk company) will be harmed if consumers attribute the ice cream to it  and the ice cream turns out not to meet the consumers’ quality expectations. Second is the claim that consumers will be harmed because their belief that the same company stands behind both products might have induced some to purchase the ice cream expecting something more than they received.

We think the evidence supporting the first argument is pretty underwhelming. Perhaps surprisingly, the marketing literature shows that producers simply aren’t likely to be harmed directly by noncompetitive uses except in unusual circumstances. Consumers, on the other hand, do have strong interests at stake in at least some noncompeting-goods cases. Where the uses are as close as milk and ice cream, consumers may assume that Borden’s guarantees the quality of the ice cream, and they may rely on that guarantee when they purchase the ice cream. On the other hand, in cases where the alleged confusion does not relate to responsibility for quality but some other relationship between the plaintiff and defendant, consumer interests are weaker than in a more traditional trademark case. Consumers get no quality-related information from the defendant’s use of a mark in cases that involve confusion about other types of relationships that might exist between the plaintiff and defendant. Consumers, for example, might believe the presence of Coca-Cola cups in front of the American Idol hosts suggests some kind of product placement agreement between Coca-Cola and the producers of American Idol, but no reasonable person thinks Coke controls the quality of the American Idol television show.

This is not to deny that consumers obtain some kind of information from these uses regarding the brands’ personalities. Consumers may, for example, learn about the image Coca-Cola is trying to project through its association with a popular show (and probably about the target audience of American Idol through its association with Coke). The fact that consumers can use brand relationships to build such image connections might be thought to benefit them, though even that is open to debate. But this image-related information is qualitatively different than the information consumers derive from quality-related messages, and we believe the benefits from protecting such information are lower and the costs of protecting it are higher.

On the benefits side, it is clear to us that confusion regarding non-quality-related relationships is particularly unlikely to harm a mark owner. That confusion might interfere with the mark owner’s ability to derive benefit from some relationships it could develop in the future, but that is merely a claim to market control and not of current harm. And the costs of that protection are high. We see at least four potential types of costs to extending trademark rights to cover any perceived relationship unrelated to the quality guarantee.

First, the expansion of trademark infringement to include any claim of affiliation or relationship necessarily expands the rights of all mark owners beyond the goods and geographic regions in which they sell or into which they are likely to expand. As a result, it produces any number of conflicts between legitimate mark owners that have coexisted for years under traditional trademark rules but who cannot share a mark without some risk that someone will think the identity of the marks implies that they are somehow related or affiliated.

Second, and related, is the problem of coddling consumers. Consumers are pretty good in most circumstances at figuring out what they want to buy. But their perceptions are shaped by the environment in which they find themselves. If they see trademarks that overlap, they will adapt and deal with that environment. But if they become used to a world in which only one company has a right to refer to a brand for any reason, they may well become confused by uses that would otherwise seem perfectly reasonable. Expanding trademark law to prevent remote prospects of confusion will change consumer expectations in ways that may make confusion on the basis of remote connections more likely, which might make still further expansion of trademark law necessary to stop critics, parodies, or gripe site web pages from funding themselves with online ads or selling t-shirts. Put another way, unless we are able to identify more specifically the types of relationships that could give rise to actionable confusion, there is no logical stopping point for trademark protection.

To see this point, consider a seemingly extreme example. We think it utterly uncontroversial for a grocery store to locate generic colas on a shelf next to Coca-Cola. But why? One could say, perhaps, that such uses do not confuse consumers into thinking that Coke licenses the placement or sponsors the generic colas. But if the placement does not confuse consumers about Coke’s relationship with the generic colas, it is only because the law has long permitted the practice, and so consumers accept and understand it. That is not an inevitable result, however. After all, cola companies do pay for the placement of their products on store shelves—they just pay grocery stores rather than mark owners. Had the courts said at the outset that trademark owners could sue to prevent such placement—reasoning that consumers might think that proximity implied association, as evidenced by the fact that the generic sellers pay for shelf placement—grocery stores might well have had to separate like products to avoid any risk of confusion. Further, even if a finding of confusion seemed unlikely, many companies would have agreed to change their behavior or take a license rather than pay to litigate a case all the way to trial and risk losing. This, in turn, would mean that consumers would not have gotten used to seeing all the colas grouped together and would make it harder for anyone else to arrange their shelves this way because, over time, the placement of generic cola beside Coke would be more surprising to consumers. And if no one else is putting generic colas next to Coke, it is an easy mental step to conclude that a grocer that does so is free riding on Coke’s interest in being insulated from nearby competitors, particularly if the grocer is making money directly or indirectly from the placement or sales of generic colas.

Third, sponsorship and affiliation cases may be more likely to reach the wrong result than other types of trademark infringement cases. Courts have developed multifactor likelihood of confusion tests to identify the circumstances in which plaintiffs should win trademark cases. But those tests were designed to deal with cases like Borden in which consumers might believe that the plaintiff is responsible for quality, and few of the factors make much sense when the issue is confusion about some unspecified sponsorship or affiliation relationship. Factors such as marketing channels, likelihood of expansion, and even consumer sophistication have little relevance to evaluating Coke’s claim to be the exclusive soft drink associated in the minds of consumers with American Idol. The result is that more and more attention is focused on factors—notably the court’s assessment of the defendant’s intent and survey evidence—that are quite malleable and may tend to shift with the quality of the lawyers or experts arguing rather than the strength of the case. Barton Beebe’s work has shown that courts tend to fall back on their assessment of a defendant’s intent in deciding whether consumer confusion is likely. Perhaps this is acceptable if the intent in question is intent to confuse consumers into buying the defendant’s goods instead of the plaintiff’s. But when the relevant intent is more amorphous—some sort of free riding—the fact that courts rely so heavily on intent becomes problematic because the concept of free riding is ultimately empty.

Finally, sponsorship or affiliation confusion claims pose particular risks to free expression. Many of the examples we discuss in this paper involve not the sale of commercial products but the use of a mark as part of protected speech on issues of social relevance. This should be no surprise because, with the importance of brand image in today’s economy, trademarks “form an important part of the public dialog on economic and social issues.”4

No one can talk about Barbie dolls and the role they play in popular culture without using the term “Barbie,” and often the dolls themselves. Nor can they effectively make fun of trademark owners without using their marks. And as many commentators have noted, modern expression frequently requires the use of trademarks in their role as social referents, whether or not the product itself is being discussed directly. Satire or commentary on unrelated political issues may need to refer to advertisements to make a clear point in a culture in which advertising is ubiquitous. And iconic brands may be needed for supportive messages as well; adulation may well prompt imitation (which is, after all, the sincerest form of flattery). One could hardly go a day in 2008 without encountering an ad for Obama memorabilia, for instance. Restricting this speech is harmful to society.

We think trademark law needs to refocus on confusion that is actually relevant to purchasing decisions. Specifically, it should anchor once again to the core case of confusion regarding the actual source of a defendant’s product or service, the type of confusion most obviously related to consumer decision making. Most cases of confusion regarding actual source will involve competitive goods, but consumers may also mistakenly believe a mark owner is the actual source of noncompetitive products that are closely related to the mark owner’s. We think genuine source confusion causes the same problems whether or not the parties’ goods compete directly, so trademark law should treat as infringing any use that is likely to cause confusion about the actual source of a product or service.

Some uses now viewed through the lens of sponsorship or affiliation raise concerns analogous to those posed by source confusion, particularly those that are likely to cause consumers to believe that the trademark owner stands behind or guarantees the quality of the defendant’s goods or services. Even if consumers understand that individual franchisees, rather than the McDonald’s Corporation, actually make their hamburgers, they are likely to expect that McDonald’s assures the burgers’ quality. But in those cases it is the fact that consumers believe the brand owner guarantees the quality of the product that leads to consumer harm if their belief is misguided. We therefore would define the category of trademark infringement to include cases involving confusion as to whether the plaintiff is responsible for the quality of the defendant’s goods or services in addition to those involving actual source confusion. And because we believe these types of confusion will impact consumer decision making with sufficient regularity, we argue that courts should presume materiality in cases that fit in the trademark infringement category.

Cases that involve allegations of other forms of confusion, many of which are now lumped into the “sponsorship or affiliation” category, should not be regarded as trademark infringement cases. This does not mean, however, that no other forms of confusion should ever be actionable. To the contrary, we believe the law should regulate some statements that create confusion regarding other types of relationships, but that claims directed to this other type of confusion should be analogized to false advertising claims. False advertising law, like trademark law, is designed to protect the integrity of markets by allowing consumers to rely on statements made by sellers. While trademark law prevents competitors from misrepresenting the source of their products by mimicking another’s brand name, logo, or trade dress, the law of false advertising prevents false or misleading statements about the nature or qualities of one’s own or a competitor’s products. We think uses that cause confusion about things other than control over quality are more like the statements regulated by false advertising law than those traditionally regulated by trademark law; thus, uses that cause non-quality-related confusion should be treated more like false advertising.

False advertising law’s broader scope, however, is counterbalanced by limitations that do not apply in trademark infringement cases. Most notably for our purposes, while trademark law presumes actionable harm from proof of consumer confusion, entitling plaintiffs to an injunction, false advertising is actionable only if the representations made by the defendant materially affect consumer purchasing decisions. In other words, false or misleading statements may or may not cause harm, depending on how people perceive those statements. Imagine, for example, that the defendant falsely states that the plaintiff has 11,500 employees, when in fact they have 11,600. The claim is one of fact, and it is provably false, but it is hard to imagine that the difference would matter to consumers at all. False advertising law accordingly treats it as not material.

We think that logically trademark law can be conceived as a specialized subset of false advertising law. False advertising law covers a broad range of misrepresentations, not all of which are actionable. Trademark law focuses on a subset of these misrepresentations—those that involve use of the plaintiff’s trademark or a simulacrum thereof to brand the defendant’s goods. Because of the centrality of those representations, courts in trademark cases have not required proof that confusion is material. Rather, they have presumed materiality.

That presumption makes sense in the context of traditional trademark infringement: if consumers are confused into thinking the defendant’s goods are the plaintiff’s, it is logical to think that that confusion will materially affect consumer purchasing decisions, at least when the confusion arises and is not dispelled before purchase. We think the same can be said of uses that cause confusion about responsibility for quality. But the expansion of trademark law to cover confusion about other types of relationships stretches the general presumption too far. The types of confusion alleged in the cases we discussed earlier may or may not affect consumer purchasing decisions; indeed, in most cases we think it unlikely that that it will.

The solution, in our view, is simple: not to categorically rule out cases involving those other forms of confusion, but to limit those claims so as to increase the benefits of those still actionable and decrease their costs. The easiest way to do so would be to import into trademark law the materiality requirement courts have created in the false advertising context and apply it in any case based on confusion that does not relate to source or control over quality. Plaintiffs bringing cases then would face a choice: (1) bring a trademark infringement claim and be required to prove confusion regarding actual source or responsibility for the quality of the defendant’s goods or services; or (2) bring a false advertising-type claim alleging that the use causes some other form of confusion and be required to prove confusion about that relationship and that such confusion materially affects consumers’ decisions whether to purchase the defendant’s goods or services.

We think requiring proof of materiality is desirable in the absence of confusion regarding responsibility for quality, both because confusion regarding other types of relationships is less likely to impact consumer purchasing decisions and because these claims are responsible for so much of the cost of trademark law. Indeed, we think it is no accident that the cases that pose the greatest threats to speech interests are sponsorship or affiliation cases, as are many of the most troubling cases involving new technologies, like the recent suits against search engines for returning paid search results in response to search queries involving trademarks. 

Requiring materiality may also enable courts to tailor relief even when they find some remediable confusion. Because materiality is a sliding scale, not an all-or-nothing inquiry, courts could plausibly find some conduct to be material to purchasing decisions of only a few customers. In false advertising cases, the strength of the materiality finding is related to the remedy; the more problematic the deception, the more willing the courts are to act. This makes sense as a matter of cost-benefit analysis; thinking about sponsorship cases in these terms may permit courts to do the same sort of balancing of remedies here, for example requiring disclaimers as the cure for certain minor types of trademark harm.

Treating some of the cases currently brought as sponsorship and affiliation cases as analogous to false advertising claims rather than trademark infringement claims would not necessarily require a change to the Lanham Act. Trademark law did not originally extend to sponsorship claims involving unrelated goods. It was courts, not Congress, that expanded the scope of trademark law, and courts presumably could undo that expansion.

Whether courts or Congress are the actors, the change we propose is straightforward: the law should require that trademark owners claiming infringement based on confusion regarding anything other than source or responsibility for quality must demonstrate the materiality of that confusion to consumer purchasing decisions. That is, we should not presume social harm from likely confusion regarding other types of relationships, as we do with confusion as to the source of products. Instead, plaintiffs should have to prove that harm, as they do in false advertising cases. And the plaintiff should have to show that it is confusion about the relationship between the parties that is material to consumers’ purchasing decisions; it is not sufficient that the trademark standing alone is material to purchasing decisions. To have a claim against the producers of a television show in which the characters used an APPLE computer, for example, APPLE would have to demonstrate both that the presence of the computer is likely to confuse consumers about a relationship between APPLE and the show and that consumers’ belief that such a relationship exists is likely to impact their decision to watch the show. It would not be enough to show that the use of the APPLE computer captured viewers’ attention.

Trademark law has expanded dramatically in the last century to the point where it now prohibits conduct by companies that seems unlikely to confuse consumers in any material way. The result is a long series of seemingly absurd decisions. We think the problem is that courts have presumed that if consumers are confused at all, that confusion is problematic. That presumption makes sense when the plaintiff and defendant are competitors and consumers are confused about the source or the quality of the products they are buying. But the same presumption makes no sense in cases of sponsorship or affiliation confusion because the evidence suggests that most such confusion does not in fact affect consumer purchasing decisions.

We suggest that trademark law can best deal with sponsorship or affiliation claims by taking a page from history and returning this subset of cases to its roots in false advertising law. Believe consumers have been injured because a Little League team uses your professional sports team name, because soccer fans are wearing your team colors without your permission, or because a TV show uses your soda in it? Our rule is simple: prove it.

Acknowledgments:

We thank Dan Burk, Dick Craswell, Stacey Dogan, Jim Gibson, Rose Hagan, Laura Heymann, Tom Lee, David McGowan, Joe Miller, Masaharu Miyawaki, Lisa Ramsey, Chris Sprigman, Rebecca Tushnet, and participants at a workshop at Stanford Law School, the Workshop on Trademarks and Trademark Data at the OECD (Paris, France), and the Ninth Annual Intellectual Property Scholars Conference for helpful conversations on this topic or comments on an earlier draft. We also thank Zaiba Baig, Erin Czerney, and Brandon Marsh for research assistance.

Copyright © 2010 Stanford Law Review.

Mark Lemley is the William H. Neukom Professor at Stanford Law School and a partner at Durie Tangri Page Lemley Roberts & Kent LLP.  Mark McKenna is an Associate Professor at Notre Dame Law School.

This Legal Workshop Editorial is based on the following Law Review Article: Mark Lemley & Mark McKenna, Irrelevant Confusion, 62 STAN. L. REV. 413 (2010).

  1. Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400 (8th Cir. 1987).
  2. Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.,550 F.3d 465, 484 (5th Cir. 2008).
  3. 300 F. 509, 511 (6th Cir. 1924).
  4. 6 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 31:146 (4th ed. 2009).

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