Trademark’s eBay Problem

This Article addresses the current debate over whether to extend, to trademark law, the rule in eBay, Inc. v. MercExchange, L.L.C. denying prevailing patent plaintiffs presumptive entitlement to injunctive relief. Its central concern, however, is not whether or how eBay should apply to trademark law, but rather the way in which the debate resurfaces structural flaws undermining foundational provisions of the Lanham Act. Namely, the Act purports to grant ex ante exclusive rights to mark owners against all confusingly similar uses, but then reserves discretion to district courts to deny statutory injunctive relief without further guidance. This ambiguity, a familiar one to the broader subject area of statutory injunctions, is particularly acute in the trademark space because the Lanham Act conflictingly aimed both to codify state-based common law trademark practices, and to create a national statutory right.