thingsareworsethanwethink.docVIP

Things are worse than we think: trademark defenses in a formalist age Michael Grynberg* Introduction 2 I. Trademark’s Expansion and the Limits of Trademark Defenses 6 A. Trademark’s Multiple Questions 6 B. Trademark’s Expanding Scope 7 1. What May Be a Trademark? 7 2. About What Must Consumers Be Confused? 8 3. When Do We Measure Confusion? 10 4. Expansive Trademark and the Lanham Act 10 C. Lagging Trademark “Defenses” 14 1. “Classic” Fair Use 17 2. Genericism 19 3. Functionality and the Question of Aesthetics 20 4. Other Defenses 22 D. Summary 23 II. A Way Out? Trademark’s Common Law Problem 23 A. Trademark and the “Common Law” 25 B. A Formalist Age? 25 C. “Trademark Formalism” at the Supreme Court 29 1. Textual Checks to Further Trademark Expansion 30 2. Trademark “Contextualism” 32 D. Summary 38 III. What’s Left for Trademark Defenses? 38 A. From Where May Trademark Defenses Come? 38 1. The “Literal” Lanham Act 39 2. “Federal Common Law” Trademark Defenses 40 3. External Constraints 45 B. What’s Left? The “Implied” Lanham Act 46 C. The Curious Case of Nominative Fair Use 47 1. Development of the Nominative Fair Use Doctrine 47 2. The Third Circuit and the Persistence of “Common Law” Thinking 49 D. Summary 51 IV. The Future of Trademark Defenses 52 A. Lanham Act Amendments 52 B. Lanham Act Contextual “Defenses” 53 1. Materiality 53 2. Safe Harbors 55 3. The Problem with Contextual Defenses 56 C. Roll Back Trademark’s Expansion 58 Conclusion 59 To lose firm ground for once! To float! To err! To be mad!—that was part of the paradise and debauchery of former ages, whereas our bliss is like that of the shipwrecked man who has climbed ashore and is standing with both feet on the firm old earth—marveling because it does not bob up and down. —Friedrich Nietzsche We are all textualists now. —Hon. Marjorie Rendell Introduction If there is a crisis in trademark law, there may be little that the courts can do about it. The “common law” practices that