There are many ill-defined principles of the law, and particularly in those areas of the law which are the most subjective. Justice Potter Stewart, in a relatively uncommon display of judicial candor, opined that "hard-core pornography" is hard to define, but that "I know it when I see it".

While this type of judicial candor, like political incorrectness, could be considered bad form, it is nevertheless true that ours is not just a government of laws, but is also a government of men/women. We like to think that the law is precise, but in every day practice, the question is how the law is interpreted. We nevertheless need to attempt to keep the gap between the law and how is interpreted as narrow as we can, since the opposite and unacceptable extreme, as has been noted, is to make everything illegal, then manage the justice system by selective enforcement.

The foregoing observations apply particularly to many "principles" of trademark law, including the term "likelihood of expansion". Right now, if you are Google, virtually anything could be said to be within the area where you are likely to expand and, on the other hand, if you are the operator of Sally's Doilies, the likelihood of your expansion into heavy road-working machinery is nil.

Is this factor a make-weight, to be cited when analysis of the other factors points to a particular conclusion? Is it fair to rope off areas, retroactively, so that the smalls of the world cannot enter with safety on pain of being ousted by the bigs? In any event, this factor is probably not one of the more important factors embodied within the normal test of the likelihood of confusion and, if employed, needs to be employed carefully. Home       TM Overview       TM Case Index

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