Determining Trademark Standing in the Wake of Lexmark

INTRODUCTION In 2002, Lexmark International, Inc., a manufacturer and seller of laser printers, sued Static Control Components, Inc., which for years has manufactured and sold "components necessary to remanufacture Lexmark ['s] [toner] cartridges." (1) Lexmark installs microchips, identifiable by printers, in its toner cartridges. In order to prevent third parties from remanufacturing and reselling the cartridges, Lexmark began to place in each of its discounted "Prebate" cartridges a microchip that would disable the cartridge once it runs out of toner. Static Control effectively thwarted this effort by "develop[ing] a microchip that could replace the microchip on the Prebate toner cartridges, permitting a third party to remanufacture and sell the toner cartridge again." (2) When Lexmark sued Static Control for violations of copyright laws and the Digital Millennium Copyright Act, Static Control filed counterclaims for false advertising and violation of antitrust law. (3) When the Supreme Court issued an opinion in this case twelve years later, it did not address the merits of any of these claims. (4) Instead, the sole issue for the Court to decide was whether Static Control was authorized to sue Lexmark for false advertising under section 43(a) of the Lanham Act. (5) The Court decided that Static Control could indeed sue. (6) In reaching that conclusion, the Court decided an issue over which the federal courts of appeals had previously been split--namely, the standard by which courts should judge whether a plaintiff has standing to sue under section 43(a). (7) Although the Court's decision in Lexmark has resolved the debate over the issue of standing for false advertising claims, it remains unclear whether the Court's holding also extends to trademark infringement suits brought under section 43(a). The Court did not explicitly address this question in its opinion, and district courts thus far have differed in their interpretations of the decision's scope. This Note addresses that ambiguity and aims to resolve it. It examines relevant statutory language, case law, and scholarly criticism, and ultimately contends that the standard articulated in Lexmark should apply to both types of claims. Part I provides background regarding the history of the Lanham Act, looking particularly at the ways in which courts have treated trademarks and false advertising differently. Part II discusses the Lexmark decision and the recent district court cases that have addressed its holding. Part III examines the text of both the Lanham Act and the Supreme Court's opinion in Lexmark in order to determine the decision's scope, and concludes that Lexmark's holding applies equally to false advertising and trademark claims. Finally, Part IV, which is divided into two subsections, advances policy-based arguments for such a uniform application of the Lexmark standard. Generally, Part IV discusses the expansive nature of modern trademark law and explores the ways in which Lexmark's standing requirement might serve as a narrowing force. First, Section IV.A laments the lack of a materiality requirement in trademark law and demonstrates how Lexmark's proximate cause requirement might make up for that absence. Section IV.B focuses specifically on one area of application in trademark law--the initial interest confusion doctrine--and suggests that Lexmark, if properly applied, could possibly eliminate this doctrine. I. BACKGROUND Enacted in 1946, the Lanham Act provides federal protection against unfair competition. (8) Section 43(a) of the Act establishes private causes of action against trademark infringement and false advertising. (9) Section 43(a) (1) (A) provides a remedy for trademark infringement against behavior that "is likely to cause confusion" as to the origin of goods or services, while section 43(a)(1)(B) protects against false advertising by prohibiting misrepresentations "in commercial advertising or promotion" about either one's own goods or services or another person's goods or services. …