Thursday, November 12, 2015

Recommended Reading: John L. Brennan, "Determining Trademark Standing in the Wake of Lexmark"

John L. Brennan, J.D. candidate at Notre Dame Law School, reviews the Supreme Court's Lexmark decision and considers whether that ruling extends to trademark infringement cases, in his article, "Determining Trademark Standing in the Wake of Lexmark," 90 Notre Dame L. Rev. 1691 (2014).

Although the Court’s decision in Lexmark has resolved the debate over the issue of  standing for false advertising claims, it remains unclear whether the Court’s holding also extends to trademark infringement suits brought under section 43(a). The Court did not explicitly address this question in its opinion, and district courts thus far have differed in their interpretations of the decision’s scope. This Note addresses that ambiguity and aims to resolve it.
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It is not difficult to understand that modern trademark law must change. The myriad available stories of attenuated yet successful theories of harm, along with the insightful criticisms offered by scholars, depict an area of law that has expanded far beyond its proper reach. Lexmark provides an opportunity for courts to institute meaningful change in trademark law. Its strict standing requirement, including the necessary showing of proximate cause, enables courts to seriously narrow the scope of trademark protection.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.


At 10:16 AM, Anonymous Tom Williams said...

This strikes me as a purely academic point, which is well-suited for a Law Review article. "Standing" isn't an issue under 43(a)(1)(A) because the substantive claim requires the plaintiff to plead and prove something akin to trademark rights. In contrast, 43(a)(1)(B) at least on its face is available to anyone who believes that he/she is "likely to be damaged" by the accused false advertising. Pre-Lexmark, we had a 3-way circuit split on 43(a)(1)(B) standing. Although the "likely to be damaged" clause applies to both subsections, it isn't limited by the "trademark"-like rights required for a claim under (A).


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