Lexmark and the Death of Initial Interest Confusion

Vol. 7 No. 1

By

Deborah R. Gerhardt is an assistant professor of law at the University of North Carolina School of Law. She is grateful to Madeleine Pfefferle for excellent research assistance.

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.

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