Plaintiff-appellant has had the misfortune ... to come before a panel of this Court allergic to the doctrine historically associated with us because of its nurture by our most illustrious judges . . . of protecting trade names [trademarks] against competition which will create confusion as to the source of goods sold under such names. The chance of the assignment calendar which has so operated against plaintiff might as easily have brought it success, to judge by the three most recent cases on this issue before us, the unanimous decision in each instance. . . of another panel. ... This natural development could be somewhat ameliorated if we adopted the practice I have urged of sitting en banc on special occasions, though obviously it cannot really be controlled until the Supreme Court decides to exercise its constitutional power in these premises.
Unfortunately, the quotation above, written in 1953 by a late Second Circuit judge, is equally applicable today in the Fifth Circuit. After many years of well-founded decisions applying the Lanham Act and common law rules of unfair competition, certain panels of the Fifth Circuit have, in recent years, demonstrated disregard for the Fifth Circuit's own precedents, for well-reasoned authority from other circuits, and for the ability of district court judges to find facts and draw appropriate conclusions of law. This proposition will be demonstrated and exemplified in the discussion below.
It is also unfortunate that the Supreme Court has continued to abdicate its responsibilities to resolve conflicts between the circuit courts and to provide authoritative interpretation of the Lanham Act. A reversal by the Supreme Court might provide the impetus needed to convince the Fifth Circuit that traditional doctrine is to be applied and ad hoc decision- making will not be tolerated. The failure of the Supreme Court to review trademark decisions effectively makes the circuit courts of appeal the courts of last resort.
Lunsford, Julius R. Jr. and Cohrs, William R.
"Trademark Protection: Judicial Inconsistency in the Fifth Circuit,"
Mercer Law Review: Vol. 32:
4, Article 11.
Available at: https://digitalcommons.law.mercer.edu/jour_mlr/vol32/iss4/11