Recommended Reading: "Trademark Injury in Law and Fact: A Standing Defense to Modern Infringement"

Put aside the WYHA?s and the TTABlog Tests. Sink your teeth into this Harvard Law Review note that strikes at the heart of trademark infringement doctrine: "Trademark Injury in Law and Fact: A Standing Defense to Modern Infringement," 35 Harv. L. Rev. 667 (December 2021). This note posits that trademark law and the law of standing have grown apart. "Trademark law has expanded to recognize infringement in the absence of concrete harm to trademark owners. Meanwhile, the law of standing has contracted to reject claims by plaintiffs whose injuries are not concrete. This Note argues that under current Article III scrutiny, these trademark claims of abstract harm should not survive."

Taken seriously, standing doctrine should limit the excesses of trademark law by imposing the harm requirement that trademark needs and lacks. Part I describes the concept of injury in modern trademark infringement. Liability is predicated on a likelihood of consumer confusion, even when there is no reason to believe that confusion has produced any harm. Part II explains the harm requirement in current standing doctrine. Last Term, in TransUnion LLC v. Ramirez, 141 S. Ct. 2190 (2021), the Supreme Court held that a legal violation is not an injury in fact unless it entails concrete harm. To be concrete, the injury must have a “close historical or common-law analogue.” Part III argues that the modern conception of likely confusion flunks the concrete-harm test because trademark law traditionally required business harm to producers. In the absence of business harm, the injury that trademark owners sustain from others’ use of their marks is closer to a nonjusticiable moral injury. When trademark owners do not establish business harm, courts must dismiss their claims on standing grounds. Part IV assesses the strengths and weaknesses of the standing defense and concludes that it is both constitutionally mandated and practically worthwhile.

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TTABlogger comment: The issue of Article III standing and injury-in-fact came up in the recent Brooklyn Brewery appeal at the CAFC. The court ruled that the Brewery lacked Article III standing to appeal the TTAB's decision dismissing Brewery's opposition to registration of the stylized BROOKLYN BREW SHOP mark because it failed to demonstrate that it would suffer injury if the registration were granted, since the Brewery doesn't sell sanitizing preparations. [TTABlogged here.]

Text Copyright John L. Welch 2021.