The Scope of Trademark Law In the Age of The Brand Persona

A description of a typical trademark infringement suit begins with the assumption that acquiring a desired product in the marketplace involves a search process, which incurs costs in terms of time spent, cognitive attention, and other resources. Consumers use trademarks as heuristics to reduce the amount of these costs. The trademark Levi’s, for example, allows a consumer to quickly find the jeans she knows fit her well without having to try on multiple pairs each time she goes to the department store. (This, of course, assumes that Levi Strauss & Company maintains the same design for its jeans over time, which trademark law does not obligate it to do.) Trademark law uses the concept of “consumer confusion” to describe a scenario in which the ability of a trademark to function as a shorthand is called into question because more than one producer is using the mark to brand its product. Thus, the theory goes, if we eliminate uses of trademarks that lead to “confusion” among consumers—the unauthorized Levi’s jeans, for example—we will stave off “search costs.”

Professor Mark McKenna’s article “A Consumer Decision-Making Theory of Trademark Law” brings welcome attention to what has become an increasingly unhelpful vocabulary. As he notes, the terms “confusion” and “search costs” are not always useful ways of characterizing the harms that result from trademark infringement. Consider, for example, the typical trademark infringement case, in which the defendant’s use of the plaintiff’s trademark misled the consumer into buying the impersonator’s product in lieu of the trademark holder’s product. Characterizing the defendant’s actions in this scenario as unfair competition is uncontroversial because the defendant took business away from the trademark owner through duplicity rather than through persuasion. But trademark law doesn’t actually tell a nuanced story about the nature of the consumer’s harm. Perhaps the consumer was ultimately pleased with her purchase, despite the fact that it was not what she initially intended to buy. Perhaps it is enough that she was provided with false information, regardless of her ultimate assessment of the product. Perhaps she will henceforth distrust the Levi’s trademark and instead try on several pairs of jeans to find the fit she likes or give up and turn to a different type of clothing altogether. Trademark law typically doesn’t delve too deeply into these questions, using “confusion” and “search costs” to characterize the various possibilities instead. A better sense of the harm that trademark law is supposed to remedy (and why it constitutes a harm) may not be crucial in a fake Levi’s scenario, but it becomes increasingly important the more the fact pattern moves away from the prototypical to more expansive theories of infringement.