A Cause of Action for Passing Off/Associational Marketing

The Trademark Scholars Roundtable participants discussed a wide range of approaches to understanding and limiting the ever-increasing sprawl of trademark rights. It was a productive and stimulating discussion. In this essay, I would like to combine some of my own ideas with points and suggestions made by the other participants, to sketch out a possible judicial approach to regulating the sprawl. Before discussing a potential solution, however, it is important to understand the nature of the problem, and some of its primary causes. Section I will discuss the problem and set the stage for my proposal. Section II will then suggest that courts relegate certain particularly problematic new forms of trademark infringement claims to a “passing off/associational marketing” evaluation. It will anchor this proposal in the historic development of the common law and courts’ construction of the Lanham Act, and then explore some of the rules, presumptions and defenses that might cabin this more limited cause of action