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November-December, 2011 Vol. 101 No. 6 Back to TMR Main Page
 
Lanham Act "False Advertising" Claims: What Is a Plaintiff to Do?
 
 
The elements of a U.S. Trademark (Lanham) Act Section 43(a)(1)(B) false advertising claim were for all intents and purposes set out by a New York lawyer, Gilbert Weil, who proposed them in a law review article written thirty-three years before the statute was enacted. Although Weil predicted that Section 43(a) would be used to challenge false claims made in advertising, he was less prescient in forecasting that a straightforward standard would replace his proposal as courts came to accept what was at the time a novel cause of action. A slightly revised version of Weil’s test routinely is applied today despite an intervening change in the statute itself.

When Weil addressed how plaintiffs should pursue a Section
43(a) false advertising claim, he was breaking new ground. He had before him only a handful of decisions passed down by courts that were at least as hostile to this new cause of action as they were comfortable with it. The elements he proposed cannot be found in the case law of the time. They departed from pre-1989 Section 43(a) in significant respects. And they diverge even further from Section 43(a)(1)(B) today.

This article considers the wisdom of continuing to apply those
elements. Part II traces the transformation of Weil’s proposal from its origins as a temporary measure, advanced in furtherance of a fledgling cause of action, to the almost universally applied standard it is today. It shows that Weil’s test served, and continues to serve, as the operative standard in Section 43(a) false advertising cases to the virtual exclusion of other tests that reflect the terms of the statute. And it suggests that the time has come to revisit Weil’s approach.

Part III undertakes this reconsideration. It examines each of
the five elements of a Section 43(a)(1)(B) claim. It then addresses how courts have struggled with the meaning of deception and have misapprehended the relationship between that element and falsity, materiality, and the right to relief. It concludes by observing that Section 43(a)(1)(B) does not actually prohibit false advertising and discusses why it is important to bear this in mind. Part IV considers how the law might look had Weil not influenced it in the way he did.
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