December 01, 2019 Feature

Reverse Confusion: A Trademark Doctrine in Decline or on the Rise?

Robert D. Litowitz

©2019. Published in Landslide, Vol. 12, No. 2, November/December 2019, 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.

Everything dies, baby that’s a fact. But maybe everything that dies someday comes back.

—Bruce Springsteen, “Atlantic City”

In “Atlantic City,” the memorable track from his sparse, haunting album Nebraska, Bruce Springsteen paints a portrait of a small-time hustler desperate for a place at the table with the big players. In a way, the Boss’s imagery could be a metaphor for small businesses and their trademarks. For much of the history of trademark law, infringement went only one way—forward. The trademark owner had to prove consumers were likely to confuse the infringer’s products with the owner’s or that the infringer was trying to trade on the trademark’s goodwill. That burden was daunting for new and small businesses with still-developing reputations. Because the conventional notion of trademark infringement flowed only forward, small, less powerful plaintiffs could not argue that their marks were being infringed because their customers were confused. Small brand owners therefore were vulnerable to having their little-known trademarks snatched by big companies with big litigation budgets.

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