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Publication Date

January 2009


Numerous articles decry the reach of modern trademark law. This article assumes the premise that these critiques are valid and asks what courts can do in response. The answer may be, not much. The “common law” practices that extended trademark’s scope are not up to the task of creating adequate countervailing defenses. Congress acquiesced to the judicial expansion of trademark liability by amending the Lanham Act with conforming language. That pattern is unlikely to be repeated for trademark defenses. The Supreme Court’s recent trademark precedents resist assertions of trademark rights beyond the express confines of the Lanham Act. If these outcomes bespeak a more textualist approach to trademark law, so much the worse for defensive doctrines, which lack the broadly worded statutory language that continues to nourish expansive liability. While the Lanham Act’s open-ended liability provisions offer some room for defensive innovation, their potential is limited. The malleability of these provisions, which invites broad trademark claims in the first place, prevents the creation of tools that could reliably dispose of cases at an early stage.

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