A Comprehensive Solution for Trademark-Triggered Displays Online

Abstract

This paper proposes a comprehensive solution to handling trademark-triggered display cases. The use of trademarks in triggered display programs, e.g. search engines and contextual advertising programs, has been the subject of great debate in trademark law. Courts are split on what the appropriate protection, if any, should be for trademark owners. While the courts struggle to find a solution, consumers are increasingly relying on these programs to provide information online. As such, there is a need for clarity in the law to protect consumers and trademark owners alike. As a starting point, this paper analyzes the economic effect of triggered display programs on the electronic marketplace. These programs provide great benefits by increasing competition and information dissemination. However, they can also be abused to the detriment of consumers, trademark owners, and the marketplace in general. As such, the paper differentiates between uses of trademarks in these programs that are either beneficial or detrimental. With this in mind, the paper then examines whether the current legal approaches to handling trademark-triggered displays are consistent with trademark law's normative goals of preventing deception and promoting economic efficiency. It concludes that neither the initial interest confusion doctrine nor the trademark use theory advance these goals. As such, the paper proposes that the solution is to refocus the analysis on the likelihood of consumer confusion. First, the trademark use doctrine must be disavowed as unnecessary and inconsistent with the Lanham Act. A confusion analyses can not only provide for a quick dismissal of frivolous claims, it also avoids the dangerous propensity of the use doctrine to under-protect trademark owners. Next, the initial interest confusion doctrine can survive as the appropriate doctrine but only if it is grounded in a proper likelihood of confusion analysis. To that end, this paper proposes a new multi-factor test to adequately measure the likelihood of consumer confusion in triggered display cases. The paper concludes that this approach will align trademark law with its normative goals and provide for much needed clarity in the area.