In his article, “A Consumer Decision-Making Theory of Trade-mark Law,” 98 Va. L. Rev. 67 (2012), Professor Mark McKenna makes two significant claims. The first is that the dominant Law and Economics theory of trademark law—the search-costs theory of the Chicago School—is in some way connected to recent undesirable expansions of trademark rights. The second is that a preferable theory of trademark law—one that would result in more tightly circumscribed and socially beneficial notions of trademark rights—would take consumer decision making, rather than search costs, as its guiding principle. I find myself sympathetic to these arguments, and yet I believe they are subject to criticism on grounds that they violate Hume’s Law—that is, they confuse the descriptive with the normative, the is with the ought. In this response I will suggest that a careful untangling of the descriptive and normative elements of McKenna’s project, while perhaps undermining some of his claims, lends considerable support to his overall ambition of organizing trademark doctrine by reference to a theory other than search-costs theory.
Sheff, Jeremy N., "Accentuate the Normative: A Response to Professor McKenna" (2012). Faculty Publications. 35.