The Limits of Trademark Law: Proscriptive Principles and Permissive Principles

Professor Graeme Dinwoodie, LL.M., J.S.D., Professor of Law, Associate Dean, and Director of the Program in Intellectual Property Law, at Chicago-Kent College of Law, November 2007

Many courts and scholars, convinced perhaps that trademark law has expanded beyond proper bounds, have sought to establish stronger limits on the scope of trademark rights. Limits might be established either by confining the scope of the proscriptive principles of trademark law (e.g., by defining actionable confusion more narrowly) or by articulating broader permissive principles (e.g., fair use, or free speech-based defenses). Which is the right approach? How would one establish limits on proscriptive principles? How would one articulate broader permissive principles? The answer might lie, in part, in giving greater prominence to a broader set of values that should inform trademark law. And the quest might helpfully be informed by looking at the contemporary uses of trademarks not only by producers but also by the public and third party commercial actors.