Reading list: trademark standing after Lexmark

John L. Brennan, Determining Trademark Standing in the Wake of Lexmark, 90 Notre Dame L. Rev. 1691 (2014). I like it:

 

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. It examines relevant statutory language, case law, and scholarly criticism, and ultimately contends that the standard articulated in Lexmark should apply to both types of claims. Part I provides background regarding the history of the Lanham Act, looking particularly at the ways in which courts have treated trademarks and false advertising differently. Part II discusses the Lexmark decision and the recent district court cases that have addressed its holding. Part III examines the text of both the Lanham Act and the Supreme Court’s opinion in Lexmark in order to determine the decision’s scope, and concludes that Lexmark’s holding applies equally to false advertising and trademark claims. Finally, Part IV, which is divided into two subsections, advances policy-based arguments for such a uniform application of the Lexmark standard. Generally, Part IV discusses the expansive nature of modern trademark law and explores the ways in which Lexmark’s standing requirement might serve as a narrowing force. First, Section IV.A laments the lack of a materiality requirement in trademark law and demonstrates how Lexmark’s proximate cause requirement might make up for that absence. Section IV.B focuses specifically on one area of application in trademark law—the initial interest confusion doctrine—and suggests that Lexmark, if properly applied, could possibly eliminate this doctrine.

RT: Sadly, this proposition may seem more logical to scholars than to courts, if results so far are any indication.