This was delivered as the Distinguished Visitor In Intellectual Property Lecture at the National University of Singapore Faculty of Law on January 9, 2023.
In recent years, trademark owners have increasingly been acting very similarly to those they accuse of infringement or dilution of their marks. They are acting as what I call “ownfringers.” They have been engaging in previously unheard-of competitor collaborations (such as between Fendi and Versace), in collaborations with businesses in distant spaces (such as between Dolce & Gabbana and Smeg, and between Adidas and Lego), and in self-parody (such as with Gucci purposely misspelling its name on its clothing). These three trends typify how trademark owners are increasingly behaving like the third parties they pursue for infringement.
How should trademark law think about these new, prevalent behaviors by mark owners? On the one hand, it is just par for the course because mark owners have the right to use their marks in commerce in ways that would constitute infringement if done by third parties (such as when a third party copies a protected mark identically onto competing goods). Even so, by engaging in ownfringement, trademark owners are potentially altering the balance or calculus of a number of fundamental aspects of trademark doctrine by behaving as ownfringers. I explore three potentially important doctrinal impacts of owfringement: on likelihood of consumer confusion, on trademark distinctiveness and self-dilution, and on the parody defense.