September 01, 2014

Lexmark and the Death of Initial Interest Confusion

Deborah R. Gerhardt

©2014. Published in Landslide, Vol. 7, No. 1, September/October 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The most recent chapter in the Lexmark v. Static Control litigation saga will be remembered for much more than the big changes it made to false advertising law. The first of the Supreme Court’s two false advertising decisions in the 2013 term, Lexmark International, Inc. v. Static Control Components, Inc.,1 knocked down two decades of false advertising standing doctrine. In a unanimous opinion, the Court reframed basic concepts of federal jurisdiction. Decades of the Court’s jurisprudence had spoken of two standing doctrines that could be used to block access to federal court: Article III and prudential standing.2 In Lexmark, the Supreme Court recalled “prudential” standing and replaced it with “statutory” standing. Federal false advertising claims were an ideal excuse to create this new paradigm. The federal circuit courts had erected high prudential barriers to one subsection of the Lanham Act while using a liberal standard for another. In Lexmark, the Supreme Court replaced them all with a new standard. This change will permit more false advertising litigation in federal court. One open question is whether the new standing doctrine will affect other claims brought under the Lanham Act.3 Because the rule was branded as “statutory” standing, Lexmark may have forged a shiny new tool for knocking out trademark infringement claims.

Premium Content For:
  • Intellectual Property Law Section
Join - Now