72 Fla. L. Rev. 673 (2020)
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Abstract

Trademark law protects consumers and mark owners against
economic harm. When consumers are confused about the source of a
good or service, this increases consumer search costs or imposes
reputational costs on trademark owners. But what happens when a
pharmacist, confused by two similar drug names, accidentally prescribes
estrogen instead of an antidepressant? Trademark law, in such cases, has
adapted its core doctrine—likelihood of confusion—to protect the public
from another kind of injury: physical harm. By lowering the standard
required for confusion when physical harm could result, courts
recognized that standard trademark analysis did not always capture the
harms posed by various kinds of confusion. This Article argues that
courts should, for similar reasons, adjust the standard for deceptiveness.
When a mark’s potential to mislead consumers about the nature of the
product poses a risk to the consumers’ physical safety, courts should
lower the standard for finding the mark deceptive.

Current law bars registration of “deceptive” trademarks—trademarks
that influence consumer purchasing decisions by misdescribing the
nature, quality, or characteristics of the good on which the mark appears.
The test for determining whether a mark is deceptive, however, is too
rigid. To make matters worse, under current doctrine all deceptive marks
are treated as equally harmful. Yet not all deceptive marks pose the same
potential for harm. Sometimes the risk of harm is only economic or has
only economic effects. A customer who receives SPUNOUT ICE
CREAM may erroneously think that the ice cream was produced by a
special spinning process, and she may buy it for that reason. In other
cases, however, the risk of harm may implicate more serious
considerations, such as physical safety. A consumer who buys the dietary
supplement BRAINSTRONG because it suggests, without evidence, that
it will improve brain function faces a variety of potential physical
effects—effects not experienced by the patron of ice cream. Risks posed
by misleading marks, in other words, vary by the type of good on which
they appear. Where a good or service implicates serious concern of
physical harm, courts should, as they have in the confusion context, pay closer attention. This requires three modest changes. First, courts should
evaluate as potentially deceptive marks that suggest, but do not describe,
a product’s qualities, characteristics, functions, features, or effects.
Second, courts should be willing to find marks deceptive even when the
deception is material to the purchasing decisions of only a small number
of consumers. Finally, courts should bar deceptive marks from trademark
protection. These changes would discourage the use of misleading marks,
increase the quality of consumer information, and reduce the risk of
physical harm.