Just what we choose it to mean

When trademark lawyers — much less judges — use a word, it means just what they choose it to mean — neither more nor less. So unsurprisingly, trademark lawyers are all over this tweet:

By “confusion,” of course, I mean the word as used in the phrase “likelihood of confusion” — the sine qua non, as they say, of trademark infringement. There is a mild variation in understanding of the word from place to place, of course. But “confusion” in trademark law quite often does not mean confusion at all.

The best example of this is almost certainly counterfeit goods. The possibility of downstream confusion notwithstanding, many consumers buy counterfeits even though they are well aware that they’re fake. Yet trademark law imputes a per se “likelihood of confusion” on counterfeits. There are fine policy reasons making or selling such merchandise is trademark infringement. And that’s confusing. But it’s not confusion.

Ed Timberlake’s offering, “damages,” warmed the cockles of my heart. Trademark law is the tort that oh so frequently never has to say “you hurt me.” The best example here is, of course, “initial interest confusion.” But the preposterous measures courts use to calculate “infringer’s profits” as damages seldom bear any relationship to the word “damages” in the language of men, or even lawyers, outside the trademark context.

Prosecuting for fun and profit

And, starting us out on this thread (chronologically), Laura Winston makes the most amusing suggestion: Use of the term “prosecution” to mean going through the process of attempting to register a trademark (or obtain a patent).

Elsewhere, of course, the word “prosecution” is used by most people to mean deploying government power to silence, incarcerate or impoverish political enemies.

Can we think of more? I’m sure we can!

Ron Coleman

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