Bartholomew on Advertising and the Transformation of Trademark Law

Mark Bartholomew, University at Buffalo Law School, has posted a new article, Advertising and the Transformation of Trademark Law. It is forthcoming in the New Mexico Law Review. Here's the abstract:

Despite the presence of a vigorous debate over the proper scope of trademark protection, scholars have largely ignored study of trademark law's origins. It would be a mistake, however, to ignore the history behind trademark law. Scrutiny of the formative era in American trademark law yields two important conclusions. First, courts granted robust legal protection to trademark holders in the early twentieth century because they accepted the benign view of advertising presented to them by advertisers. As advertising became linked to cultural progress and social cohesion, courts adopted doctrinal revisions to protect advertising's value that remain embedded in modern trademark law. Second, judges adopted a specific construction of the consumer mind in the early 1900s to reconcile the tension between legal protection for trademark goodwill and belief in free competition. They concluded that although advertising successfully generates positive thoughts in consumers' heads, consumers will switch their trademark allegiances when presented with a better quality product from a competitor. In other words, the mark left by advertising is not permanent. Recent research in cognitive psychology suggests, however, that advertising does leave a permanent mark on its audience. Based on new insights into the involuntary functioning of the consumer mind, the Article suggests that trademark doctrine should be altered to avoid privileging marks that are already popular with consumers and are unlikely to ever lose their luster in our subconscious.