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Trademark use, Pepsi, and new technology

In case anyone did not catch it, Rebecca Tushnet has a very nice recap of a recent conference in Iowa on the subject of trademark use. I’m very grateful to Rebecca for all the conference blogging she’s done over the past few years — it’s been wonderful to be a virtual attendee at so many events and I think having an archive of these is an incredible service to the IP community.

Also, Eric Goldman and James Grimmelmann are in disagreement about the “ask for Coke and get handed Pepsi” infringement example that has been a favorite of both courts and commentators on trademark law for some time. Eric, a proponent of use doctrine, thinks it is “distracting” and we should “retire” it, James disagrees. As a skeptic of the recent applications of trademark use doctrine (at least in the Internet context), I’m with James — preventing passing off is what trademark law has always been about, even when that passing off is done silently.

Also, I just wanted to agree with Eric (and with James agreeing with Eric) that some kind of legislative solution to the current “use” doctrine might be the best way out of this current case law confusion. It strikes me that, with very few exceptions, courts have found themselves grappling with trademark use primarily due to policy and equity concerns raised by new technologies, e.g., domain names, search engines, pop-ups, and even 1-800-trademarks. When trademark law collided with domain names, we saw a number of legislative responses, most importantly the amendment of the Lanham Act to include the ACPA. Given that trademark law is now in collision with search, I imagine there might be a legislative response to this as well.

And I hope if things go that way, we won’t see Congress giving a rubber stamp to INTA‘s language, but rather see legislation that balances the interests of INTA, Google, and the public. Wishful thinking perhaps, but hope springs eternal.