Testing modern trademark law's theory of harm

Iowa Law Review

Volumn 95, Issue 1, 2009, Pages 63-117

  McKenna, Mark P ^a  

^a NOTRE DAME LAW SCHOOL   (United States)

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EID: 75849127557     PISSN: 00210552     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (288)

1. See, e.g., Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777, 781 (2004) (arguing that while the "initial interest confusion" doctrine originally referred to consumer confusion that occurred before the sale, it has changed into a stand-alone doctrine that does not resemble a traditional likelihood of confusion claim) ; Jennifer Rothman, Initial Interest Confusion: Standing at the Crossroads of Trademark Law, 27 CARDOZO L. REV. 105, 108 (2005) (arguing that the "initial interest confusion" doctrine is anti-competitive and "short-changes consumers") ; see also Glynn S. Lunney, Trademark Monopolies, 48 EMORY L. J. 367, 371 (1999) (arguing that the recent shift in trademark law has changed the question asked from one of probable confusion as to the source of a product to possible confusion over the connection between the senior mark owner and the allegedly infringing use).
2. Santa Clara Law, Trademark Dilution Symposium, http://www.scu.edu/law/ tmdilution/articles-and-presentations.cfm (last visited Nov. 10, 2009) ; see also Sonia Katyal et al., Panel II: Trademark Dilution Revision Act Implications, 16 FORDHAM INTELL. PROP. MEDIA & ENT. L. J. 1093, 1103 (2006) (discussing how deleterious the elimination of the noncommercial-use exception of trademark law would be) ; Michigan Law Review First Impressions, Online Symposium on the Trademark Dilution Revision Act of 2006, http://www.michiganlawreview.org/ articles/tag/Trademark+Dilution (last visited Nov. 10, 2009) (offering a forum for discussing the Trademark Dilution Revision Act of 2006).
3. See, e.g., Keith Aoki, How the World Dreams Itself to Be American: Reflections on the Relationship Between the Expanding Scope of Trademark Protection and Free Speech Norms, 17 LOY. LA ENT. L. J. 523, 535-36 (1997) (arguing that expansive trademark decisions "protect the property rights of the trademark owner over individual rights of free expression by failing to balance the constitutionally protected rights in property with the constitutionally protected right of freedom to individual expression.... instead, giv[ing] property rights precedence over First Amendment right") (footnotes omitted) ; Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 NOTRE DAME L. REV. 397, 397-98 (1990) (arguing that, while "the Constitution supplies a normative principle favoring public access to the tools of expression, the body of law that has developed under the first amendment provides a surprisingly uncongenial framework for analysis") ; William McGeveran, Rethinking Trademark Fair Use, 94 IOWA L. REV. 49, 51-52 (2008) (arguing that, while courts frequenly reach the right results in speech-related cases, trademark law's fair use doctrines are too uncertain and lead to lengthy and costly litigation, ultimately chilling speech) ; Lisa P. Ramsey, Increasing First Amendment Scrutiny of Trademark Law, 61 SMU L. REV. 381, 417 (2008) ("Courts should be wary about labeling all infringing commercial uses of trademarks 'misleading,' as this could suppress or chill nonmisleading commercial speech.").
4. Indeed, recent empirical work confirms that dilution claims rarely affect outcomes in practice, at least in decided cases. See Barton Beebe, The Continuing Debacle of U. S. Antidilution Law: Evidence from the First Year of Trademark Dilution Revision Act Case Law, 24 SANTA CLARA COMPUTER & HIGH TECH. L. J. 449, 450 (2008) (noting that empirical analysis of dilution cases in the first year following the enactment of the Trademark Dilution Revision Act of 2006 demonstrates that "antidilution law continues to have no appreciable effect on the outcomes of federal trademark cases or the remedies issuing from those outcomes") ; Clarisa Long, iDilution, 106 COLUM. L. REV. 1029, 1031 (2006) (concluding that, as of 2006, federal judicial enforcement of dilution was not robust and eroding over time).
5. Robert G. Bone, Enforcement Costs and Trademark Puzzles, 90 VA. L. REV. 2099, 2100 (2004) (noting that this standard account fails to explain some recent trademark law doctrines, but nevertheless subscribing to the central function) ; see also Ann Bartow, Likelihood of Confusion, 41 SAN DIEGO L. REV. 721, 722 (2004) ("Confusion among consumers is the grave iniquity against which trademark laws and jurisprudence are intended to guard.") ; Christopher Sprigman, Copyright and the Rule of Reason, 7 J. TELECOMM. & HIGH TECH. L. 317, 338-39 ("[P]laintiffs [in trademark cases] are required to introduce evidence that consumers actually are confused when presented with a senior mark and a similar junior mark-i.e., direct evidence of the kind of harm that the trademark law seeks to prevent." (emphasis added)). It is not clear whether Sprigman meant to imply that trademark plaintiffs are required to produce evidence of actual, as opposed to likely, confusion, but any such implication is incorrect. Every circuit, to my knowledge, has made clear that evidence of actual confusion, though probative, is not required. See 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:12 (4th ed. 2007) ("Proof of actual confusion is not necessary....").
6. Non-competing goods could span a wide spectrum, ranging from closely related products like athletic clothing to wholly unrelated services like selling securities. Nike, Inc. v. Nike Securities, L. P., No. 97 C 0008, 2000 WL 336524 (N. D. Ill. Mar. 28, 2000) (denying Nike Securities' motion for summary judgment on Nike, Inc.'s trademark infringement and unfair competition claims).
7. See Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1841 (2007) (arguing that traditional trademark law focused narrowly on producers' interests in preventing trade diversion).
8. See Mark A. Lemley & Mark P. McKenna, Irrelevant Confusion, 62 STAN. L. REV. (forthcoming 2009) (manuscript at 18-20, on file with the Iowa Law Review) (arguing that the majority of extreme trademark infringement cases involve claims of "sponsorship or affiliation" confusion, which exist to accommodate claims against non-competitors).
9. See, e.g., Nicholas S. Economides, The Economics of Trademarks, 78 TRADEMARK REP. 523, 525-27 (1988) (suggesting that trademarks primarily exist to enhance consumer decisions and create incentives for firms to produce desirable products) ; William N. Landes & Richard A. Posner, The Economics of Trademark Law, 78 TRADEMARK REP. 267, 267 (1988) (arguing that trademark law is best understood as "trying to promote economic efficiency") ; Mark A. Lemley, The Modem Lanham Act and the Death of Common Sense, 108 YALE L. J. 1687, 1695-96 (1999) (stating that the single purpose of trademark law is "to enable the public to identify easily a particular product from a particular source") ; Glynn S. Lunney, Jr., Trademark Monopolies, 48 EMORY L. J. 367, 417 (1999) (describing why ownership attached to the consumer). Lunney stated: Ownership was assigned to the person who adopted the mark for her trade, not because she had created it or its favorable associations, but because such person was conveniently placed and strongly motivated to vindicate the broader public interest in a mark's ability to identify accurately the source of the goods to which it was attached.
10. Id. See also Dogan & Lemley, supra note 1, at 778 (arguing that the historical normative goal of trademark law is to foster the flow of information in markets, thereby reducing search costs for consumers) ; Long, supra note 4, at 1033-34 (contrasting dilution protection with traditional trademark protection and arguing that the former is producer-centered while the latter is consumer-centered).
11. See generally McKenna, supra note 7 (arguing that traditional trademark law focused narrowly on producers' interests in preventing trade diversion).
12. See infra Part III. A (articulating the standard arguments in favor of protection in the context of non-competing goods). Though these arguments embraced a radically more expansive view of the relevant interests, the focus on producer interests was consistent with trademark law's traditional orientation.
13. At a minimum, a mark owner must have some legitimate claim of harm to have standing to bring a claim. Under modern standing doctrine, it is not enough that the producer might be able to vindicate consumer interests. Instead, the "irreducible constitutional minimum of standing" requires: (1) that the plaintiff has suffered an "'injury in fact'-an invasion of a legally protected interest which is... concrete and particularized" (meaning the injury must affect the plaintiff in a personal and individual way) and "'actual or imminent, not "conjectural" or "hypothetical; "'" (2) "there must be a causal connection between the injury and the conduct complained of-the injury has to be 'fairly... trace [able] to the challenged action of the defendant, and not... th[e] result [of] the independent action of some third party not before the court;'" and (3) "it must be 'likely,' as opposed to merely 'speculative,' that the injury will be 'redressed by a favorable decision. '" Lujan v. Defenders of Wildlife, 504 U. S. 555, 560-61 (1992) (citations omitted). Moreover, "the 'injury in fact' test requires more than an injury to a cognizable interest. It requires that the party seeking review be himself among the injured." Id. at 563.
14. I mean to analogize here to the exclusive right to prepare derivative works in copyright. See 17 U. S. C. § 106 (2) (2006) ("Subject to section 107 through 122, the owner of copyright under this tide has the exclusive right[]... (2) to prepare derivative works based upon the copyrighted work."). The Copyright Act defines a derivative work as "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." Id. §101.
15. See Sony Corp. v. Universal City Studios, Inc., 464 U. S. 417, 429 (1984) (noting that a copyright is "intended to motivate the creative activity of authors and inventors by the provision of a special reward"). Most scholars suggest the derivative work right is justifiable as an application of this utilitarian principle. According to Paul Goldstein, for example, the derivative work right "enables prospective copyright owners to proportion their investment in a work's expression to the returns expected not only from the market in which the copyrighted work is first published, but from other, derivative markets as well." Paul Goldstein, Derivative Rights and Derivative Works in Copyright, 30 J. COPYRIGHT SOC'Y U. S. A. 209, 216 (1983) ; see also PAUL GOLDSTEIN, COPYRIGHT § 5.3 (2d ed. Supp. 2004) (repeating the analysis). On this theory, the derivative right may increase incentive to create a new work, increase the incentive for owners to invest in new uses of the work, or both. William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. LEGAL STUD. 325, 353-57 (1989) (arguing that derivative rights increase the incentive to engage in creative activities, encourage earlier publication of an original work by making it unnecessary to withhold the publication in order to gain a lead time in derivative markets, and reduce transactional costs by concentrating the control over derivative works on the copyright owner). There are some alternative accounts of the derivative right. See, e.g., Michael Abramowicz, A Theory of Copyright's Derivative Right and Related Doctrines, 90 MINN. L. REV. 317, 322 (2005) (arguing the derivative right "is best understood not solely as a means of furthering the incentive to create works, but more significantly as a means of providing an author control over the release of adaptations and limiting the production of adaptations that would be close substitutes for one another" and thereby reducing redundancy).
16. It is worth noting that giving serious weight to market preemption and free-riding arguments may well lead to fundamental changes in trademark law's doctrinal structure, as marketallocation decisions need not be determined by consumer confusion.
17. Lemley & McKenna, supra note 8 (manuscript at 49).
18. Id.
19. This section is adapted from McKenna, supra note 7.
20. See id. (explaining that English common-law courts and courts of equity worked to remedy the harm improper diversion of trade caused a producer).
21. Del. & Hudson Canal Co. v. Clark, 80 U. S. 311 (1871).
22. Id. at 322-23 (emphasis added).
23. JAMES LOVE HOPKINS, THE LAW OF TRADEMARKS, TRADENAMES AND UNFAIR COMPETITION § 1, at 1 (2d ed. 1905) (emphasis added).
24. Id. § 3, at 9; see also Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 413 (1916) ("Th[e] essential element is the same in trade-mark cases as in cases of unfair competition unaccompanied with trade-mark infringement.") ; Marsh v. Billings, 61 Mass. (1 Cush.) 322, 330 (1851) (referring to the close conceptual relationship between trademark infringement and unfair competition).
25. Am. Washboard Co. v. Saginaw Mfg. Co., 103 F. 281, 284 (6th Cir. 1900).
26. Levy v. Walker, (1878) 10 A. C. 436, 448 (Ch. D.).
27. This notion of labor giving rise to property is most often associated with John Locke. JOHN LOCKE, TWO TREATISES OF GOVERNMENT § 47 (Peter Laslett ed., Cambridge Univ. Press 1988) (1690) ("[E]very one ha[s] a Right (as hath been said) to as much as he could use, and had a Property in all that he could affect with his Labour: all that his Industry could extend to, to alter from the State Nature had put it in, was his."). Locke argued that God gave the world "to the use of the Industrious and Rational", and that one acquires property by mixing his labor with the common. Id. § 28, at 288-89, § 34, at 291. Thus, the proper object of the law is to promote "the honest industry of Mankind." Id. § 42, at 298.
28. McKenna, supra note 7, at 1876-80; see also Eric R. Claeys, Takings, Regulations, and Natural Property Rights, 88 CORNELL L. REV. 1549, 1556 (2003). Claeys suggests mat: If one could ask nineteenth-century jurists to reduce the natural-right approach to a slogan, they might say that the object of all property regulation is to secure to every owner an "equal share of freedom of action" over her own property. On this understanding, every owner is entitled to some zone of non-interference in which to use her possessions industriously, producdvely, and consistent with the health, safety, property, and moral needs of her neighbors.
29. Id.
30. Taylor v. Carpenter, 2 Sand. Ch. 603 (N. Y. Ch. 1846).
31. Id. at 617. The U. S. Supreme Court similarly stated: Rival manufacturers may lawfully compete for the patronage of the public in the quality and price of their goods, in the beauty and tastefulness of their enclosing packages, in the extent of their advertising, and in the employment of agents, but they have no right, by imitative devices, to beguile the public into buying their wares under the impression they are buying those of their rivals. Coats v. Merrick Thread Co., 149 U. S. 562, 566 (1893) ; see also Hilton v. Hilton, 104 A. 375, 376 (N. J. 1918) (quoting Vice Chancellor Wood's definition of goodwill in Churton v. Douglas, (1859) 70 Eng. Rep. 385, 385 (Ch.), as including every affirmative advantage acquired by a firm in carrying on its business, but not the negative advantage of competitors refraining from carrying on their business).
32. See Robert G. Bone, Hunting Goodwill-A History of the Concept of Goodwill Trademark Law, 86 B. U. L. REV. 547, 575-79 (2006) (discussing how the growth of national markets and the rise of national advertising changed trademark law).
33. Id.
34. See generally Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813 (1927) (advocating that trademark law reflect twentieth-century economics).
35. Id. at 814 (noting that, because of changes in production and distribution practices, "the source or origin of the goods bearing a well known trademark [was] seldom known to the consumer").
36. Id. at 819 ("The mark actually sells the goods.").
37. Id. at 829.
38. Id. at 829-30. Some of Schechter's examples of particularly distinctive marks were not really "added to... the human vocabulary by their owners." Id. ROLLS-ROYCE, for example, was actually comprised of surnames. See Rolls-Royce: History, http://www.rolls-royce.com/north america/history/default.htm (last visited Nov. 12, 2009) (describing the agreement between Henry Royce and Charles Rolls by which "Royce Limited would manufacture a range of cars to be sold exclusively by CS Rolls & Co." under the name Rolls-Royce). Others, like BLUE GOOSE, had ordinary English meanings. See Encyclopaedia Britannica Online, Snow Goose, http://www.britannica.com/eb/article-9068392/snow-goose (last visited Nov. 12, 2008) ("The blue goose, with bluish gray body plumage, white head and neck and, sometimes, white breast and belly, was long separated from C. caerulescens but is now recognized as a dark-coloured phase of the lesser snow goose."). But Schechter's point was less about whether these terms were "added to the language" than about the fact that consumers associated them only with particular products or services.
39. Schechter, supra note 32, at 825.
40. Id.
41. Id.
42. See Sara Stadler, The Wages of Ubiquity in Trademark Law, 88 IOWA L. REV. 731, 795-96 (2003) (describing Schechter's focus on associations between marks and products).
43. Schechter, supra note 32, at 830. Schechter also suggested that: [A] part from the destruction of the uniqueness of a mark by its use on other goods... once a mark has come to indicate to the public a constant and uniform source of satisfaction, its owner should be allowed the broadest scope possible for "the natural expansion of his trade" to other lines or fields of enterprise.
44. Id. at 823.
45. See Stadler, supra note 40, at 755. As Stadler notes: Schechter had defined a new linkage for trademark law: one between a unique, singular trademark and the particular product on which it appeared. Source, the old preoccupation of trademark law, no longer was part of the equation-except, of course, to indicate the party who would reap the benefits of uniqueness.
46. Id. (footnote omitted).
47. See, e.g., Edward C. Lukens, The Application of the Principles of Unfair Competition to Cases of Dissimilar Products, 75 U. PA. L. REV. 197, 203 (1927) (advocating for broad construction of the word "related" in the context of the "related goods" inquiry).
48. Coats v. Holbrook, 7 N. Y. Ch. Ann. 645, 653 (N. Y. Ch. 1845) (noting trademark law's purpose of preventing a defendant from "attract[ing] to himself the patronage that without such deceptive use of such names... would have inured to the benefit of [the plaintiff]").
49. Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409-10 (2d Cir. 1917).
50. Id.
51. Id. at 409.
52. Id. at 409-10.
53. Yale Elec. Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928).
54. Id. at 974 (citation omitted).
55. Id.
56. Lukens, supra note 43, at 204. According to Lukens: As commercial organization becomes more complex, it is becoming more usual for a corporation to manufacture or sell a wide variety of products. Many companies produce articles that have no similarity, nor any relationship beyond the fact that they are so produced. Such a concern frequently applies the same trade-name to all its products in the hope that the good-will of the older products will attach to the newer ones. The public has become so accustomed to the idea of dissimilar articles being produced by the same company that it is hardly surprised at any combination whatever.
57. Id. (emphasis added) ; see also George W. Goble, Where and What a Trade-Mark Protects, 22 U. ILL. L. REV. 379, 388 (1927) (arguing against the requirement that the defendant's goods be of the "same class" as the plaintiffs and stating, "It seems reasonable to suppose that ordinarily identity of trade name or mark in itself would sufficiently relate them to cause mental association as to the manufacture or origin of the goods, dissimilar and unrelated though the goods may otherwise be....").
58. In Vogue Co. v. Thompson-Hudson Co., 300 F. 509 (6th Cir. 1924), for example, the court found the defendant's use of "The Vogue Hat Company" to sell hats infringed Vogue's rights in the Vogue mark for fashion magazines, and stated: There is no reason to doubt that this course of conduct by the defendant manufacturer and its retailers created a very common alternative impression-first, that these hats were manufactured by the plaintiff; or, second, mat, although some knew that plaintiff was not manufacturing, yet these hats were in some way vouched for or sponsored or approved by the plaintiff.
59. Id. at 511.
60. Schechter described the process of expansion of unfair competition principles beyond cases where diversion of trade was likely as "one of making exceptions rather than of frank recognition of the true basis of trademark protection". Schechter, supra note 32, at 821.
61. Triangle Publ'ns, Inc. v. Rohrlich, 167 F.2d 969, 973 (2d Cir. 1948) (emphasis added).
62. See McKenna, supra note 7, at 1893-95 (describing the traditional rule against licensing and its theoretical justification).
63. See, e.g., Keebler Weyl Baking Co. v. J. S. Ivins' Son, Inc., 7 F. Supp. 211, 214 (E. D. Pa. 1934) ("An article need not be actually manufactured by the owner of the trade-mark it being enough that it is manufactured under his supervision and according to his directions thus securing both the right of the owner and the right of the public." (citing Coca-Cola Co. v. State, 225 S. W. 791, 794 (Tex. Civ. App. 1920))).
64. 15 U. S. C.§ 1055 (2006).
65. Id.§1127.
66. 4 MCCARTHY, supra note 5, §2:4 (quoting F. M. SCHERER, INDUSTRIAL MARKET STRUCTURE AND ECONOMIC PERFORMANCE 378 (2d ed. 1980).
67. WILUAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 168, 179 (Harvard Univ. Press 2003) ("[A] firm with a valuable trademark will be reluctant to lower the quality of its brand because it would suffer a capital loss on its investment in the trademark.... [L]egal protection of trademarks encourages the production of higher-quality products.") ; see also id. at 203 (arguing that imitators have incentives to produce lower-quality goods). In fact, the junior user's incentive to free ride on the senior user's mark by imitating the mark and cutting quality "will be greater the higher the quality of the underlying good, adjusted for [the junior user's] costs of making the physical good appear equivalent to [the senior user's]." Id.
68. Edward Rogers made essentially the same argument in 1949, when he wrote that without trademarks, "[t]here could be no pride of workmanship, no credit for good quality, no responsibility for bad." Edward S. Rogers, The Lanham Act and the Social Function of Trademarks, 14 LAW& CONTEMP. PROBS. 173, 175 (1949).
69. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 193 (1985) (stating that "trademarks desirably promote competition and the maintenance of product quality") ; see also Publ'ns Int'l Ltd. v. Landoll, Inc., 164 F.3d 337, 339 (7th Cir. 1998) ("[T]he seller will be able to appropriate the benefits of making a product that consumers like, and so he will have an incentive to make a good product.").
70. Goble, supra note 52, at 379.
71. Id. at 385.
72. Id.; see also Lukens, supra note 43, at 197 (explaining types of harm similar to those explained by Goble).
73. It is true that consumer confusion is a predicate to these producer harms, and it obviously is possible that consumers are harmed by their confusion in some of these cases as well. The point here is not that there is no overlap between producer and consumer interests. It is instead that advocates for broader protection did not base their arguments on consumer interests, and consumer and producer interests are not obviously coterminous here. For an argument regarding the scope of consumer interests, see generally Lemley & McKenna, supra note 8.
74. Goble, supra note 52, at 391 n. 41. To be fair, the cases Goble contemplated here were actions by the FTC, not traditional trademark infringement actions by private actors. Nevertheless, Goble made this suggestion in the course of arguing for expansion of the private right to non-competing goods and gave no sense of a distinction between the two contexts.
75. Here I define "source" to include sponsorship or affiliation relationships.
76. 4 MCCARTHY, supra note 5, § 24:15 ("If, for example, the infringer's V-8 vitamin pills make the purchaser's child sick, she may well carry over an unfavorable reaction to plaintiffs V-8 vegetable juice.").
77. The quality of the defendant's goods or services typically is considered in the likelihood of confusion analysis, but courts regularly note that plaintiffs are not required to demonstrate the inferiority of the defendant's goods in order to prevail. See, e.g., Lois Sportswear, U. S. A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986) (suggesting in a case of post-sale confusion that the high quality of the defendant's products might actually "increase the likelihood of confusion as to source") ; Wesley-Jessen Div. of Schering Corp. v. Bausch & Lomb Inc., 698 F.2d 862, 867 (7th Cir. 1983) (noting that "[c]ourts readily find irreparable harm in trademark infringement cases because of the victim's inability to control the nature and quality of the infringer's goods, not because the infringer's goods are necessarily inferior", and that "[e]ven if me infringer's goods are of high quality, the victim has the right to insist that its reputation not be imperiled by another's actions" (citation omitted)) ; Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928) ("The disparity in quality between such wares and anything the plaintiff makes no longer counts, if that be true. The defendant need not permit another to attach to its good will the consequences of trade methods not its own. "). Indeed, according to McCarthy, "today, the overwhelming majority view is that it is not necessary for plaintiff to prove that the defendant's non-competing goods are of inferior quality." 4 MCCARTHY, supra note 5, § 24:15.
78. Robert G. Bone, Enforcement Costs and Trademark Puzzles, 90 VA. L. REV. 2099, 2150 (2004) (describing this phenomenon as courts focusing on "likelihoods and ignor[ing] harms").
79. Id. at 2155.
80. Id.
81. Id. at 2152.
82. See 4 MCCARTHY, supra note 5, § 24:15 ("[E]ven if defendant's goods are not of inferior quality today, who is to say what they may be like in the future?").
83. Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409 (2d Cir. 1917).
84. Id. (emphasis added).
85. Yale Elec. Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928).
86. Id. at 974 (emphasis added).
87. El Greco Leather Prod. Co. v. Shoe World, Inc., 806 F.2d 392 (2d Cir. 1986).
88. Id. at 395 (citations omitted) ;
89. see also Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d Cir. 1979) ("The trademark laws are designed not only to prevent consumer confusion but also to protect 'the synonymous right of a trademark owner to control his product's reputation. '") ;
90. Carling Brewing Co. v. Philip Morris, Inc., 277 F. Supp. 326, 335 (N. D. Ga. 1967) (discussing the repercussions of trademark infringement on the trademark owner). The court held: The defendant argues that it has an "untarnished reputation for fair dealing and honesty" and that its products are "noted for their high quality", and on this basis urges that its infringement cannot cause any real or meaningful injury. Granting that the defendant has such a reputation, and that their products have such a quality, the rule remains: "It is not to be disputed that the plaintiff is not required to put its reputadon in defendant's hands, no matter how capable those hands may be."
91. Id. (citations omitted).
92. Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1430 (7th Cir. 1985). The court notes that: The value of a trademark is in a sense a "hostage" of consumers; if the seller disappoints the consumers, they respond by devaluing the trademark.... The similar mark also dilutes the hostage value of the first, because the firm that created the mark may lose business on account of the inferior products of its rival, while the rival may not lose as much business as its own quality dictates because customers mistakenly blame the first firm for the failings of the second.
93. Id. (footnote omitted) ;
94. see also, LANDES & POSNER, supra note 61, at 203 (arguing that junior users that adopt marks similar to other earlier users for the purpose of confusing consumers are "likely to produce a lower-quality product").
95. Univ. Bookstore v. Univ. of Wis., Madison, 33 U. S. P. Q.2d (BNA) 1385 (T. T. A. B. 1994).
96. Id. at 1395 (noting, with respect to use of the "Bucky Badger" mascot on clothing, that opposers were selling apparel imprinted with the mascot by the early 1950s and had continued to do so along with many others, while the University did not begin marketing such clothing until, at the earliest, sometime in 1983).
97. See 4 MCCARTHY, supra note 5, § 17:8 (noting that a mark can "become[] abandoned to generic usage as a result of the trademark owner's failure to police the mark, so that widespread usage by competitors leads to a generic usage among the relevant public, who see many sellers using the same word or designation").
98. Because rights at common law accrue through use, it is not clear why the University should have been regarded as having superior rights in use of the mark for merchandise. To the extent use of the University's logo on merchandise is the type of use sufficient to trigger trademark rights, the University Bookstore and others in the Madison area made use of the mark long before the University. Nevertheless, the Board concluded that the Bookstore acquired no rights through its use because it had only sold apparel and merchandise imprinted with the logo and never used the logo as a mark. Univ. Bookstore, 33 U. S. P. Q.2d at 1396.
99. Yet it is not at all clear why, if the Bookstore's use was not sufficient to trigger rights because it merely sold merchandise bearing the logo, the University acquired rights when it made precisely the same type of use.
100. Id. at 1396.
101. Brewski Beer Co. v. Brewski Bros., 47 U. S. P. Q.2d (BNA) 1281 (T. T. A. B. 1998).
102. Id. at 1288.
103. Bd. of Governors of Univ. of N. C. v. Helpingstine, 714 F. Supp. 167 (M. D. N. C. 1989).
104. Id. at 171.
105. Id.
106. See, e.g., Barcamerica Int'l U. S-A. Trust v. Tyfield Imps., Inc., 289 F.3d 589, 597-98 (9th Cir. 2002) (rejecting the licensor's argument that "because [the licensee] makes good wine, the public is not deceived by [the licensee's] use of the [licensed] mark", on the ground that "[w]heuier [the licensee's] wine was objectively 'good' or 'bad' is simply irrelevant What matters is that [the mark owner] played no meaningful role in holding the wine to a standard of quality-good, bad, or otherwise").
107. Precision Tune, Inc. v. Tune-A-Car, Inc., 611 F. Supp. 360 (W. D. La. 1984).
108. Id. at 368.
109. Id.
110. Scarves by Vera, Inc. v. Todo Imps. Ltd., 544 F.2d 1167 (2d Cir. 1976).
111. Id. at 1172. The court identified two other relevant interests: the mark owner's interest in "protecting the good reputation associated with his mark from the possibility of [it] being tarnished by inferior merchandise of the junior user", and the "public's interest in not being misled by confusingly similar marks."
112. Id.
113. Schechter clearly accepted this proposition. See Schechter, supra note 32, at 823. He states:
114. Quite apart from the destruction of the uniqueness of a mark by its use on other goods,... once a mark has come to indicate to the public a constant and uniform source of satisfaction, its owner should be allowed the broadest scope possible for "the natural expansion of his trade" to other lines or fields of enterprise.
115. Id.
116. Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 410 (2d Cir. 1917).
117. Boston Prof'l Hockey Ass'n v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1011 (5th Cir. 1975).
118. See, e.g., Warner Bros. v. Gay Toys, Inc., 658 F.2d 76, 80 (2d Cir. 1981) ("To deny Warner Bros. injunctive relief would be to enable Gay Toys 'to reap where [i]t has not sown. '" (citation omitted)) ;
119. Stork Rest. v. Sahati, 166 F.2d 348, 356 (9th Cir. 1948) ("The value of the designation is wholly adventitious, brought about by continued, expensive, and spectacular advertising-such as the giving away of one thousand dollar bills. The conclusion is inescapable that the appellees are seeking to capitalize on the publicity that the appellant has built around the name.").
120. 4 MCCARTHY, supra note 5, § 2:30.
121. David A. Aaker & Kevin Lane Keller, Consumer Evaluations of Brand Extensions, 54 J. MARKETING 27, 28 (1990).
122. Id.
123. Id.
124. Id. For example, consumers might associate Lowenbrau with relaxing with good friends; Mercedes with wealthy, discriminating people; and Toyota with Japan.
125. Id. Brands like Budweiser, Chevrolet, Levi's, and Bank of America also might have strong product-class associations and those product-class associations may themselves have additional associations.
126. Id.
127. George S. Low & Charles W. Lamb, Jr., The Measurement and Dimensionality of Brand Associations, 9 J. PRODUCT & BRAND MGMT. 350, 352 (2000).
128. C. W. Park, B. J. Jaworski & D. J. MacInnis, Strategic Brand Concept-Image Management, 50 J. MARKETING 135, 136 (1986).
129. Aaker & Keller, supra note 105, at 29.
130. Id.
131. Valarie A. Zeithaml, Consumer Perceptions of Price, Quality, and Value: A Means-End and Synthesis of Evidence, 52 J. MARKETING 2 (1988) ;
132. Aaker & Keller, supra note 105, at 29.
133. Low & Lamb, supra note 109, at 353;
134. Zeithaml, supra note 113, at 3.
135. Low & Lamb, supra note 109, at 360.
136. Id. at 361 (noting that researchers commonly postulate that consumers have more developed memory structures for these brands because they are "willing to expend more energy in processing information regarding familiar brands compared to unfamiliar brands").
137. Some researchers distinguish between brand extensions and line extensions. In this terminology, new products introduced in the same basic-level category as the parent brand would be line extensions and new products in different basic-level categories would be brand extensions.
138. Barbara Loken & Deborah Roedder John, Diluting Brand Beliefs: When Do Brand Extensions Have a Negative Impact?, 57 J. MARKETING 71, 74 n. 3 (1993). The "basic" level "is the one most easily recognized and discriminated by consumers."
139. Id. at 74 (citation omitted). Thus, the basic-level category for Coca-Cola might be "soda." A line extension men would be a new type of soda offered under the COCA-COLA mark, such as Diet Coke. A brand extension would involve introduction of a new juice product under the COCA-COLA mark. Brand extensions, in this terminology, would thus be more remote from the original products than would line extensions.
140. Nicole L. Votolato & H. Rao Unnava, Spillover of Negative Information on Brand Alliances, 16J. CONSUMER PSYCHOL. 196, 196 (2006).
141. See, e.g., Peter A. Dacin & Daniel C. Smith, The Effect of Brand Portfolio Characteristics on Consumer Evaluations of Brand Extensions, 31 J. MARKETING RES. 229, 239 (1994) (finding, in a study involving hypothetical brands, that the number of products affiliated with a brand was positively related to confidence and favorability of a brand extension, but failing to find such a result in the context of real brands).
142. Joseph W. Chang, Will a Family Brand Image Be Diluted by an Unfavorable Brand Extension ? A Brand Trial-Based Approach, 29 ADVANCES IN CONSUMER RES. 299, 299 (2002) ;
143. cf. Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science, 86 TEX. L. REV. 507, 529-32 (2008) (describing the problems with extrapolating lab results to the commercial marketplace and noting that, in one well-known study of dilution, "the test environment was itself decontextualizing, depriving subjects of the cues they would ordinarily use to distinguish a dilutive use from a senior mark"). Recent studies of other aspects of consumer behavior have reflected the difficulty of translating lab results to real-world settings.
144. See Ori Heffetz & Moses Shayo, How Large Are Non-Budget-Constraint Effects of Prices on Demand? 4-5 (Mar. 19, 2009) (unpublished manuscript, on file with Iowa Law Review) (finding in a lab experiment that prices positively affected stated willingness to pay, but finding no such demand effects in a field experiment and concluding that experimentally detectable price effects on demand may be too small to matter in at least some real-world settings).
145. Chang, supra note 120, at 299 (citing research demonstrating that the attitudebehavior correlation is significant only when the product information comes from direct experience). These findings are also relevant with regard to the purported harms of dilution, since blurring-and especially tamishment-is based on claims about how certain uses affect consumers' attitudes towards brands.
146. Direct experience here refers to "product use from purchase, direct tests, sampling, and other evaluation behaviors."
147. Id. at 299 n. 2. Indirect experiences include "advertising exposure, personal selling presentations, exposure to displays, packages, and point-of-purchase materials, [and] word-of-mouth."
148. Id.
149. See, e.g., Timothy D. Wilson & Daniel T. Gilbert, Affective Forecasting: Knowing What to Want, 14 CURRENT DIRECTIONS IN PSYCHOL. SCI. 131, 131 (2005) (discussing various ways in which people mispredict future emotional states, including "the impact bias, whereby people overestimate the intensity and duration of their emotional reactions to future events-even when they know what the future event is likely to entail and they are not in a particularly 'hot' or 'cold' emotional state at the time of making their forecast" (emphasis omitted)). Some speculation is involved even when studies involve real brands since they tend to use hypothetical extensions, forcing respondents to declare how they would feel about a brand if the extension happened.
150. See, e.g., Kathryn A. Braun-LaTour, Michael S. LaTour, Jacqueline E. Pickrell & Elizabeth F. Loftus, How and When Advertising Can Influence Memory for Consumer Experience, 33 J. ADVERTISING 7, 7 (2004) (discussing how advertising influences consumers' memories of their experiences).
151. Id.
152. For examples of the costs, see generally Lemley & McKenna, supra note 8, for a discussion of a number of cases in which mark owners asserted extreme claims and the costs of sponsorship or affiliation claims.
153. Courts generally articulate the relevant standard as a question of whether the defendant's use is likely to cause confusion among "an appreciable number of ordinarily prudent purchasers."
154. See, e.g., Int'l Ass'n of Machinists & Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996) ("[T]he law has long demanded a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.") ;
155. McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979) ("'[A]n appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods.'" (quoting Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978))). While there is no absolute quantitative threshold for determining what level of confusion is "appreciable", courts have generally been persuaded by evidence of fifteen-percent confusion.
156. See, e.g., Exxon Corp. v. Tex. Motor Exch., Inc., 628 F.2d 500, 507 (5th Cir. 1980) (finding "a high possibility of confusion" between TEXON and EXXON where approximately fifteen percent of the individuals surveyed associated the TEXON sign with EXXON, another twentythree percent associated the sign with gasoline, a gas station, or an oil company, and only seven percent associated the sign with Texas Motor Exchange) ;
157. RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979) (noting that survey results showing fifteen-to twenty-percent confusion corroborates likelihood of confusion) ;
158. James Burrough, Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 279 (7th Cir. 1976) (noting that a fifteen-percent level of confusion is neither small nor de minimis). In one case, the Second Circuit called evidence of 8.5% confusion "strong evidence."
159. Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707, 716 (S. D. N. Y. 1973)
160. modified, 523 F.2d 1331 (2d Cir. 1975) (finding 8.5% confusion "strong evidence" of a likelihood of confusion).
161. A quick note about terminology: these studies use "parent" brand, "core" brand, and "family" brand more or less interchangeably. To the extent there is any distinction between these terms it is that a "parent" brand is any brand that is extended (and intended to convey a parent-child relationship) ; a "core" brand refers to the parent brand in its original context; and a "family" brand is a brand under which more than one product or service is offered. Hence, a "parent" brand could be a "core" brand if, before the extension, the brand is primarily known in the context of a few products or services. A "parent" brand could also be a "family" brand if it had already been applied to multiple products or services. The brand would be considered a "family" brand after the extension since it would now encompass both pre-extension and postextension products or services. None of the studies, however, differentiates findings on the basis of whether the extended brand is referred to as a "parent", "core", or "family" brand.
162. See Kevin Lane Keller & David A. Aaker, The Effects of Sequential Introduction of Brand Extensions, 29 J. MARKETING RES. 35, 47 (1992) (discussing the factors that contribute to a successful brand extension).
163. While in one study Aaker and Keller found that extensions from high-quality brands may still be evaluated favorably even when they are somewhat more remote-that is, highquality core brands "stretch farther"-the relatively dissimilar products in that study were still quite close to those offered under the core brand.
164. See id. at 40-44 (testing extensions deemed close, medium, and far from the core brand product, where ice cream was the "far" extension of a brand known for potato chips).
165. Id. at 45.
166. See Aaker & Keller, supra note 105, at 30.
167. Id.
168. Id.
169. Id.
170. Id.
171. See Aaker & Keller, supra note 105, at 30 (discussing the importance of product classes when determining complements).
172. Id.
173. Id. Perceived expertise and trustworthiness are highly correlated and may depend on the perception of previous extensions. The effect of previous extensions on new extension evaluation appears to depend more on the success of the previous extension than the relative similarity of the intervening extension. Aaker and Keller found no differences in perceived company credibility (and presumably in evaluations of proposed extensions) based on fit between an intervening extension and the core brand.
174. Id.
175. Id. at 36-37.
176. Id.
177. Aaker and Keller, supra note 105, at 28.
178. Id.;
179. Zeithaml, supra note 113, at 7.
180. Aaker and Keller, supra note 105, at 29.
181. Barbara Loken & Deborah Roedder John, Diluting Brand Beliefs: When Do Brand Extensions Have a Negative Impact?, 57 J. MARKETING 71, 79 (1993).
182. Jean B. Romeo, The Effect of Negative Information on the Evaluations of Brand Extension and the Family Brand, 18 ADVANCES IN CONSUMER RES. 399, 400 (1991).
183. Id.
184. Id. at 404-05.
185. Keller & Aaker, supra note 129, at 47.
186. Id.
187. Id. at 43. Successful extensions had no impact on high-quality core brands.
188. Id.
189. Id. at 46.
190. Id. Notably, even this risk appeared significant only for moderate-quality core brands. Unsuccessful extensions had no impact on evaluation of extensions by high-quality brands. An interesting parallel finding was that an unsuccessful extension, even when it affects credibility and prevents the core brand from expanding to less similar products, does not appear to prevent the core brand from "backtracking" and later introducing a more similar extension.
191. Id. at 48.
192. Keller & Aaker, supra note 129, at 44-45. In an odd set of additional findings, Keller and Aaker find that evaluations of an average-quality core brand were significantly lower when the company had successfully introduced two extensions than when it had successfully introduced one extension, even though perceptions of company credibility and product fit were not significandy lower.
193. Id. Conversely, evaluations of high quality core brands seemed relatively unaffected by multiple unsuccessful extensions even though perceptions of company credibility (with respect to further extensions) and fit were lower.
194. Id. at 48. The authors suggest these findings might be explained by contextual effects, and that more strongly held attributes about the core brand (which may come from tests of real brands with which consumers had actual experience) can be expected to show more resistance to contextual effects.
195. Id.
196. Chang, supra note 120, at 302.
197. Id.
198. Tülin Erdem, An Empirical Analysis of Umbrella Branding, 35 J. MARKETING RES. 339, 347 (1998).
199. Id.
200. Id.
201. Erdem's study relied on purchase data after exposure to free toothbrush samples provided explicitly by the brand owner.
202. Id. Thus, not only was there no doubt regarding the source of the toothbrushes, the brand owner aggressively tied the two products together. Whether the same results would have ensued if consumers found the similarly branded toothbrushes on their own is an open question.
203. Jean Romeo found in her study that negative information about an extension in the same product category as the parent brand had a marginally significant negative effect on the family brand image, though negative information about extension in a different product category actually improved the parent brand image. Romeo, supra note 146, at 404. Romeo claims that brand image might improve in the face of negative information about an extension in a different product category because the negative information is inconsistent with subjects' preexisting schemas and therefore "can be dismissed as due to temporary situational factors."
204. Id. at 405. In other words, consumers may simply conclude that the skills needed to make the original product would not transfer to the product extension, and negative information about the extension therefore was more reflective of the extension product than the original brand image.
205. Id. This explanation might plausibly explain why information about an extension in a different product class would not have a negative impact on brand image, but it does not explain improvement in brand image. Moreover, Romeo's explanation of this unexpected result is oddly inconsistent with her earlier claim that negative information about similar products is remembered precisely because of its inconsistency with the preexisting schema.
206. See id. at 401 (" [I]nconsistency which is unambiguous, strong, or evaluative, is even more likely to capture attention and be remembered.").
207. Helge Thorbjørnsen, Brand Extensions: Brand Concept Congruency and Feedback Effects Revisited, 14 J. PRODUCT & BRAND MGMT. 250, 250-51 (2005) ;
208. see also Henrik Sjödin & Fredrik Törn, When Communication Challenges Brand Associations: A Framework for Understanding Consumer Responses to Brand Image Incongruity, 5 J. CONSUMER BEHAV. 32, 38 (2006) (noting that brand image incongruity affects consumers' attitude towards the brand).
209. Thorbjørnsen, supra note 162, at 252.
210. Id.
211. Id.
212. Id. at 254-55.
213. Chang, supra note 120, at 302-03.
214. Sjödin & Törn, supra note 162, at 35, 38.
215. See id. (positing that "although the brand evaluation is not affected by the evaluation of the incongruent element, there may still be an opportunity for brand image to influence brand evaluations").
216. See Stephen J. Hoch, Product Experience Is Seductive, 29 J. CONSUMER RES. 448, 451 (2002) ("Using a simple associative learning procedure, [the authors] showed that, in a few trials, people learn brand associations that later block the learning of new predictive attribute associations."). Even Jacob Jacoby, perhaps dilution's biggest supporter, admits that truly wellknown marks are essentially unshakable.
217. Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. PUB. POL'Y & MARKETING 265, 274 (2000) ("It appears that very strong brands are immune to dilution because their memory connections are so strong that it is difficult for consumers to alter them or create new ones with the same brand name."). There is abundant evidence outside the branding context of the robustness of initial judgments.
218. See, e.g., Jon D. Hanson & Douglas A. Kysar, Taking Behavioralism Seriously: The Problem of Market Manipulation, 74 N. Y. U. L. REV. 630, 646-54 (1999) (discussing a number of empirical demonstrations of the persistence of initial judgments, even in the face of contradictory or ambiguous hard data). Even conscious consumers who try to reason through additional information are unlikely to change their perceptions; attempts at rationalization may actually serve to increase confidence in a faulty intuitive judgment, a phenomenon known as confirmation bias.
219. See id. at 647-50, 660-62;
220. Nicholas Epley & Thomas Gilovich, The Anchoringand-Adjustment Heuristic: Why the Adjustments Are Insufficient, 17 PSYCHOL. SCI. 311, 312 (2006) ("[P]eople evaluate hypotheses by trying to confirm them.").
221. Daniel J. Howard, Roger A. Kerin & Charles Gengler, The Effects of Brand Name Similarity on Brand Source Confusion: Implications for Trademark Infringement, 19 J. PUB. POL'Y & MARKETING 250, 252 (2000).
222. The authors manipulated levels of involvement in two ways. First, participants in the study were told they were going to be entered into a drawing as a reward for their participation.
223. Id. at 255. High-involvement subjects were told the drawing winners would receive 50 of any brand drain cleaner or car wax presented in the study.
224. Id. Drain cleaner and car wax were the two products tested in the study.
225. Id. at 254. Low-involvement subjects were told the drawing would be for $50 of any brand of carpet spot-stain cleaner used in the study.
226. Id. at 255. Second, as a check, participants were asked on the second page of the response booklet to indicate whether "[t]he drain cleaning (car wax) products [were] relevant to [them]/not relevant to [them] and personally involving/not personally involving."
227. Id.
228. Id. at 261.
229. Id. at 254.
230. Id. at 255.
231. Howard, Kerin & Gengler, supra note 171, at 255.
232. Id.
233. See id. at 257-58 (mentioning that the brand name was the only thing altered between like test objects).
234. If Thorbjørnsen is correct that high familiarity correlates with higher involvement, then it seems probable mat consumers are less likely to be confused about third-party uses that are similar to familiar brands only in sight or sound.
235. Eva Martínez & José M. Pina, The Negative Impact of Brand Extensions on Parent Brand Image, 12 J. PRODUCT & BRAND MGMT. 432, 437-38 (2003) (referring to studies by Keller and Aaker in 1992 and Loken and John in 1993).
236. Barbara Loken & Deborah Roedder John, Diluting Brand Beliefs: When Do Brand Extensions Have a Negative Impact?, 57 J. MARKETING 71, 72 (1993).
237. See Girish N. Punj & Clayton L. Hillyer, A Cognitive Model of Consumer-Based Brand Equity for Frequently Purchased Products: Conceptual Framework and Empirical Results, 14 J. CONSUMER PSYCHOL. 124, 125 (2004) (stating that consumers tend to rely predominately on attitudes toward a brand when evaluating new products) ;
238. see also Laura R. Bradford, Emotion, Dilution, and the Trademark Consumer, 23 BERKELEY TECH. L. J. 1227, 1260 (2008).
239. Keller & Aaker, supra note 129, at 48.
240. See, e.g., Amna Kirmani, Sanjay Sood & Sheri Bridges, The Ownership Effect in Consumer Responses to Brand Line Stretches, 63 J. MARKETING 88, 89-90 (1999) (discussing various studies dealing with the effect of brand extension on the parent brand).
241. Id. at 94-95.
242. Rebecca Tushnet argues that this research regarding sub-branding suggests that dilution by tarnishment is unlikely because "recognizing an absence of affiliation should allow consumers to avoid penalizing the senior brand." Tushnet, supra note 120, at 544. But the research actually supports an even stronger point: the parent brands in these studies were not diluted even when subjects believed the extension products actually came from the same company.
243. Bradford, supra note 182, at 1274 n. 230 In other words, these studies suggest that parent brands are not harmed when consumers have reasons to differentiate whether or not consumers are confused about affiliation.
244. Id.
245. See Sandra J. Milberg, C. Whan Park & Michael S. McCarthy, Managing Negative Feedback Effects Associated with Brand Extensions: The Impact of Alternative Branding Strategies, 6 J. CONSUMER PSYCHOL. 119, 119 (1997) (finding that sub-branding may prevent negatively evaluated extensions from harming the parent brand). Bradford suggests that these studies might not adequately account for accrued brand fatigue (or "wearout"), which would take time to develop and would not be captured by the responses to information about particular individual extensions.
246. See Bradford, supra note 182. Even if that is true, it is more of an argument for a dilution by blurring claim than one based on a likelihood of confusion.
247. See Elizabeth F. Loftus, Planting Misinformation in the Human Mind: A 30-Year Investigation of the Malleability of Memory, 12 LEARNING & MEMORY 361, 364 (2005) (discussing studies which demonstrated subjects could be led to believe they had met Bugs Bunny at a Disney resort-even though Bugs Bunny is a Warner Brothers, and not a Disney, character-by showing the subjects an advertisement that featured Bugs Bunny and inviting them to "Remember the Magic").
248. See supra note 127 (listing cases finding infringement based on confusion levels as low as fifteen percent).
249. Trademark infringement claims are not necessary to deal with those that involve uses in connection with negative images, as those are precisely the uses to which the tarnishment branch of diludon law is targeted.
250. See 15 U. S. C. § 1125 (c) (2) (C) (2006) (defining "dilution by tarnishment" as "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark").
251. Maureen Morrin, The Impact of Brand Extensions on Parent Brand Memory Structures and Retrieval Processes, 36 J. MARKETING RES. 517, 520 (1999).
252. Id. at 521 (noting that respondents were able to match non-dominant parent brands to categories approximately 641 milliseconds faster after exposure to extension information and dominant parent brands 247 milliseconds faster). Dominance here refers to the extent to which a particular brand is recalled in response to a category cue: a dominant brand, like CREST, is one that tends to be recalled first when prompted with the category cue, like "toothpaste."
253. See Bradford, supra note 182, at 1262-66 (describing the effect of familiarity and noting that consumers' "most common deciding factor is brand familiarity").
254. Some research suggests mat highly priced and heavily advertised brands are correlated with consumer perception of quality.
255. See Paul Milgrom & John Roberts, Price & Advertising Signals of Product Quality, 94 J. POL. ECON. 796, 799 (1986) (finding that consumers infer product quality from price and advertising volume). It should be noted that this correlation is between highly priced and heavily advertised goods and consumer perception of quality, not necessarily actual product quality.
256. See Sjödin & Törn, supra note 162, at 38.
257. Id. Some have speculated that any affective benefit could eventually become a liability because it causes over-familiarity and leads to boredom.
258. See Bradford, supra note 182, at 1275. It is unclear from the literature, however, whether such a wearout effect exists at all and, more specifically, the extent to which it affects familiar, as opposed to unfamiliar, brands.
259. See Douglas Scott & Debbie Solomon, What Is Wearout Anyway?, 38 J. ADVERTISING RES. 19 (1998). The research that supports a wearout effect focuses on exposure to advertising information, and it is not clear that repeat exposure to the same or a similar mark in different contexts would have the same effect.
260. See Bobby J. Calder & Brian Sternthal, Television Commercial Wearout, 17 J. MARKETING RES. 173, 185 (1980) (noting that evaluations of television commercials and advertised products became more negative after multiple repetitions) ;
261. Margaret C. Campbell & Kevin Lane Keller, Brand Familiarity and Advertising Repetition, 30 J. CONSUMER RES. 292 (2003) (arguing that overuse of promotional strategies could lead to wearout because market entrants are more likely to choose those strategies known to produce wearout effects). But even accepting for the sake of argument that wearout is possible, the research suggests the risk comes from unvaried exposure. To the extent the junior use varies from the parent brand, even if it is noticeably similar, the wearout risk seems quite small. Finally, at a more conceptual level, the wearout risk, if it exists, has much more to say about a dilution-by-blurring claim, since boredom from repeated exposure seems to have nothing to do with whether consumers attribute the repeated information to the same source. That is, if there is a wearout risk, it could arise from unvaried exposure to a mark regardless of whether the later use is actionable as trademark infringement.
262. Subramanian Balachander & Sanjoy Ghose, Reciprocal Spillover Effects: A Strategic Benefit of Brand Extensions, 67 J. MARKETING 4, 9 (2003).
263. Id. at 11. In fact, Balachander and Ghose find that the reciprocal-spillover benefit to the parent brand is stronger than the forward-spillover effect on the junior use, which was not demonstrated in the study in any event
264. Id. This means that the benefits to the senior user from the extension actually exceeded the benefits to the extension product of using a known name.
265. Id.
266. Votolato & Unnava, supra note 118, at 196.
267. A. R. Rao & R. W. Ruekert, Brand Alliances as Signals of Product Quality, 36 SLOAN MGMT. REV. 87, 92 (1994) ;
268. B. L. Simonin & J. A. Ruth, Is a Company Known by the Company It Keeps? Assessing the Spillover Effects of Brand Alliances on Consumer Brand Attitudes, 35 J. MARKETING RES. 30, 32 (1998).
269. David O. James, Madge Lyman & Susan K. Foreman, Does the Tail Wag the Dog? Brand Personality in Brand Alliance Evaluation, 15 J. PRODUCT & BRAND MGMT. 173, 174 (2006).
270. L. P. Bucklin & S. Sengupta, Organizing Successful Co-Marketing Alliances, 57 J. MARKETING 32, 33 (1993).
271. James, Lyman & Foreman, supra note 201, at 175.
272. Id. at 176.
273. Id.
274. Votolato & Unnava, supra note 118, 196-202.
275. Previous research suggested to the authors that consumers might react differently to different types of negative information-information about competence, on the one hand, and moral misdeeds on the other.
276. See id. at 197;
277. T. J. Brown & P. A. Dacin, The Company and the Product: Corporate Associations and Consumer Product Responses, 61 J. MARKETING 68, 76 (1997) (noting that the more positively a consumer feels about a company offering a mediocre product, the more negatively they will feel about the product) ;
278. Bogdan Wojciszke, Hanna Brycz & Peter Borkenau, Effects of Information Content and Evaluative Extremity on Positivity and Negativity Biases, 64 J. PERSONALITY & SOC. PSYCHOL. 327, 327 (1993) (stating that negative behavior is more informative than positive behavior). Specifically, this earlier research suggested that consumers react more negatively to competence-based information than moral failures when the target of the information is a company; just the reverse is true when the target of the information is a person.
279. Votolato & Unnava, supra note 118, at 197.
280. Votolato & Unnava, supra note 118, at 201. These findings, as the authors also note, may help explain why spillover effects are not frequently reported in practice.
281. Id.
282. Id. at 198. At least some of the benefits discussed above might accrue in the context of uses that suggest some kind of brand alliance. Specifically, such uses seem likely to increase familiarity, which may make the mark owner's brand more likeable and more salient.
283. See supra Part V. A.3.
284. Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 CAL. L. REV. 1581, 1623 (2006).
285. Id. at 1625 (describing the similarity analysis as "a frustratingly nebulous and unsystematic inquiry, one that is typically little more than an exercise in abstract formal comparison").
286. Id.
287. Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981) ("[S]ince modern marketing methods tend to unify widely different types of products in the same retail outlets or distribution networks, this factor is not of overriding importance." (citation omitted)).
288. See Lemley & McKenna, supra note 8.