This week I attended a talk given by Tom McCarthy (of McCarthy on Trademarks fame). He discussed Victoria's Secret and Dastar, two trademark cases decided recently by the Supreme Court. Both decisions imposed limitations on some of the more expansive theories of trademark law (trademark dilution in Victoria’s Secret and reverse passing off in Dastar).

Two things struck me as I read the cases. First, in both decisions, the court mentions overlap with other areas of the law (copyright in Dastar, and unfair competition in Victoria’s Secret). Second, there was no obvious harm to consumers in either case by letting the offending activities continue. Two cases may not be enough to constitute a pattern, but I wonder if there isn’t something to these similarities. Perhaps the court is reluctant to expand trademark law beyond its traditional justification of consumer protection, believing that other legal doctrines are better suited to address other societal ills. If so, these cases may present a glimmer of hope to those concerned about the expansion if IP law.

Professor McCarthy also spent some time explaining trademark dilution theory (the idea that use of a famous mark by a third party can dilute the value of the mark even without consumer confusion). He noted that it is a widely misunderstood doctrine, and that a number of young scholars have derided it as bunk. Though I haven’t (yet) read the work of those scholars, their conclusion has intuitive appeal. After the Victoria's Secret decision, dilution must be something more than mental association (e.g., “Greatest Snow on Earth” makes you think of “Greatest Show on Earth”), and something less than (and different from) likelihood of consumer confusion (which would be trademark infringement).

But is there a there there? What exactly is between mental association and confusion? Moreover, if there is no confusion where is the harm to the holder of the original mark? I have a tough time buying the idea that a mark is damaged in any significant way without any consumer confusion, even if later users do not produce goods of the same quality as the original user’s.