Trademark Law and Social Norms

Abstract

At the most general level, trademark law is classically motivated by the goal of protecting understandings that consumers have developed regarding the source or quality of goods or services. This is a rather simple, if conventional, account of trademark law. In fact, contemporary uses of trademarks implicate a far more complex set of social concerns than the protection of consumer understanding. But even this simple statement of the purpose and remit of trademark law begs many questions. These questions fall into two basic groups. First, because trademark law does not seek to prevent all forms of confusion, the consumer protection rationale presents a series of essentially prescriptive questions regarding the nature and level of confusion that should be actionable, along with the forms of consumer understanding that are properly protected against such confusion. And, once those prescriptive choices are made, trademark law confronts a second set of questions that on their face are more positivistic dilemmas: how to determine consumer reaction to a symbol used purportedly to mark goods (the question of protectability, or distinctiveness) and the effect of unauthorized third party use of that symbol (the question of infringement, classically involving assessment of the likelihood of confusion). These inquiries have the appearance of purely empirical assessments, and indeed doctrine regarding distinctiveness and likelihood of confusion is heavily driven by the factual context of particular disputes that have reached the courts. Courts in trademark cases devote substantial time developing doctrinal rules designed to facilitate this second set of empirical inquiries, but rarely discuss the prescriptive questions upon which the empirical inquiries are based. Courts typically treat consumer understanding as a largely pre-determined, relatively fixed, fact to which the template of trademark law can be applied and from which, therefore, the answers to the relevant legal questions of association and confusion easily provided. This Article challenges this dominant analytical approach to trademark lawmaking as descriptively false and prescriptively harmful. It masks important prescriptive choices that courts are making about trademark law without any explicit discussion of those choices. Thus, the prevalent form of trademark decisionmaking prevents proper development of a normative debate about the nature and scope of trademark law. To highlight the nature of the descriptive flaws and prescriptive perils of this approach, I explore the insight that scholars and courts are insufficiently attentive to whether trademark law should simply react to consumer behavior or whether instead the law should proactively seek to influence and construct consumer (and producer) behavior. Stated differently, what is the relationship between trademark law and the social norms by which trademark law purports to be guided?