Keith Mack
Trademark law is a federal issue, with the power to regulate trademarks held by the federal government under the Commerce Clause of the Constitution. The Lanham Act is the federal statute that governs trademarks, defining a trademark as any word, name, symbol, or device, or any combination thereof that a person uses to identify and distinguish his or her goods. However, this has led to constitutional challenges, particularly in relation to the First Amendment. The Supreme Court has dealt with several cases involving trademarks, including Matal v. Tam, Vidal v. Elster, and Jack Daniel's Properties, Inc. v. VIP Products, LLC, which have raised questions about the balance between trademark protection and freedom of speech.
| Characteristics | Values |
|---|---|
| Trademark law is equitable | Defendants may assert the defenses of fair use and collateral use |
| Trademark law protects a trademark owner's exclusive right to use a trademark | The plaintiff must demonstrate that the defendant's use of the mark causes a likelihood of confusion |
| The federal government holds the power to regulate trademarks | States may also regulate trademarks |
| Trademarks must be distinctive to be protected | Fanciful, arbitrary, suggestive, and descriptive marks |
| The Lanham Act's prohibition on the registration of immoral or scandalous trademarks violates the First Amendment | Matal v. Tam (2017) |
| The use of someone else's trademark may be protected as free speech as a parody or satire | Jack Daniel's Properties Inc. v. VIP Products LLC (2023) |
| The Supreme Court upheld the "names clause" of trademark law against a First Amendment challenge | Vidal v. Elster (2024) |
| A trademark owner may claim trademark "dilution" | The use of your mark diminishes the strength or value of the trademark owner's mark |
| A trademark owner who believes their mark is being infringed may file a civil action in state or federal court | Most trademark owners choose to sue for infringement in federal court |
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What You'll Learn
Free speech challenges
In Vidal v. Elster (2024), the Supreme Court upheld the "names clause" of trademark law, rejecting a First Amendment challenge. The case involved Steve Elster's attempt to register the phrase "Trump too small" for political commentary, which was denied by the Patent and Trademark Office. The Court ruled that the Office properly declined the application under the Lanham Act's prohibition on registering trademarks consisting of a name.
Another case, Jack Daniel's Properties, Inc. v. VIP Products, LLC (2023), addressed free speech issues in trademark infringement claims. Justice Elena Kagan explained that trademark owners typically sue when someone uses a similar mark, causing consumer confusion. While trademark law protects producers and consumers, it can limit free expression. Parody or satire of a trademark may not infringe if it does not create consumer confusion. Trademark dilution claims argue that another's expressive work harmed an existing trademark by tarnishing its value or blurring its meaning.
The distinction between commercial and non-commercial speech has been questioned in evaluating the constitutionality of trademark laws regulating expression. Some argue that trademark laws regulate both types of speech, and courts should determine if a law suppresses or chills non-commercial expression. However, the level of First Amendment scrutiny applied to commercial versus non-commercial speech remains unresolved.
The Houston Law Review article discusses unresolved issues in Matal v. Tam, including the applicable First Amendment tests, the regulation of non-commercial speech, and the content-based nature of trademark laws. It highlights the need for guidance on evaluating the constitutionality of trademark laws and registration regulations.
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Constitutionality of trademark statutes
Trademark law in the United States is primarily governed by the Lanham Act, a federal statute. The federal government holds the power to regulate trademarks under the Commerce Clause of the Constitution, although states may also regulate trademarks.
Trademark law protects a trademark owner's exclusive right to use a trademark and prevents consumer confusion. However, it can also limit freedom of expression, particularly in cases of satire or parody. This has led to several constitutional challenges based on the First Amendment.
In Matal v. Tam (2017), the Supreme Court ruled that the Lanham Act's prohibition on the registration of immoral or scandalous trademarks violates the First Amendment. The Court criticised the law for discriminating based on viewpoint, but did not decide which First Amendment tests should be used when evaluating free speech challenges to trademark laws.
In Vidal v. Elster (2024), the Supreme Court upheld the "names clause" of trademark law, ruling that the Patent and Trademark Office properly denied an application to register the phrase "Trump too small" for use on items like t-shirts as political commentary.
Other cases, such as Jack Daniel's Properties, Inc. v. VIP Products, LLC (2023), have addressed the tension between trademark protection and free speech, with Justice Elena Kagan noting that trademark dilution claims can argue that another's expressive work harmed an existing trademark by tarnishing its value or blurring its meaning.
In addition to First Amendment challenges, trademark law has also faced constitutional challenges based on the lack of harm requirement in current standing doctrine. In TransUnion LLC v. Ramirez, the Supreme Court held that a legal violation is not an injury in fact unless it entails concrete harm, which has implications for trademark infringement cases that traditionally focus on the likelihood of confusion rather than business harm.
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Government regulation of trademarks
The federal government holds the power to regulate trademarks under the Commerce Clause of the US Constitution. However, states may also regulate trademarks. Trademark law is a federal issue, and the Lanham Act is the federal statute that governs trademarks. Trademark law protects a trademark owner's exclusive right to use a trademark and prevents consumer confusion.
Trademark law also exists to protect consumers from confusion. A trademark infringement action serves this purpose by prohibiting others from using or infringing on trademarks in a way that creates consumer confusion over brands. To establish a violation under the Lanham Act, the plaintiff must demonstrate that the defendant's use of the mark to identify goods or services causes a likelihood of confusion.
However, trademark law can also limit freedom of expression. When someone parodies or satirizes another's trademark, this may not create consumer confusion, and the trademark owner may still bring a trademark dilution claim. This type of claim argues that another's expressive work harmed an existing trademark by tarnishing its value or blurring its meaning.
The US Supreme Court has considered several cases involving the intersection of trademarks and the First Amendment. In Matal v. Tam (2017), the Court held that the Lanham Act's prohibition on registering immoral or scandalous trademarks violates the First Amendment. The Court criticised the disparagement clause for discriminating based on viewpoint but declined to discuss whether the void for vagueness doctrine applied. In Vidal v. Elster (2024), the Court upheld the "names clause" of trademark law, ruling that the Patent and Trademark Office properly denied an application to register the phrase "Trump too small" for use on items like t-shirts as political commentary.
The distinction between commercial and non-commercial speech has also been discussed in relation to trademark law. Some have argued that this distinction is less relevant when evaluating the constitutionality of trademark laws regulating the content or viewpoint of expression. However, the majority of the Court has not stated that the commerciality of a content-based law is irrelevant in determining the level of First Amendment scrutiny.
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Trademark dilution
For a trademark to be considered diluted, it must be famous, i.e., it must be a "household name" and instantly recognisable to the general public. Examples include Google, Coca-Cola, Sony, and Nike. The strength required for a trademark to be considered diluted differs among jurisdictions. Some jurisdictions require additional registration of these trademarks as defensive marks to qualify for dilution protection.
Dilution consists of two principal harms: blurring and tarnishment. Blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name, often in a way that is offensive or unflattering. An example of tarnishment is the use of Adidas as a mark on a line of unhealthy food products, which conflicts with the Adidas brand of fitness-related products.
The Federal Trademark Dilution Act (FTDA) in the United States creates a federal cause of action to protect famous marks from unauthorised use, prevent others from trading upon the goodwill and renown of such marks, and prevent dilution of the distinctive quality of such marks. The FTDA is intended to prevent both actual and likely dilution. The Trademark Dilution Revision Act of 2006 revised the FTDA, requiring plaintiffs to show that the defendant's mark is likely to cause dilution, rather than proving actual dilution.
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Consumer confusion
To prove trademark infringement, the trademark owner must demonstrate that the defendant's use of a similar mark is likely to cause confusion among consumers. Courts will consider the similarity of the marks and the similarity of the goods or services offered when assessing the likelihood of confusion. For instance, identical trademarks with different owners can be registered for unrelated goods and services, such as "Dove" for soap and ice cream bars, or "Delta" for faucets and air transportation services. In these cases, consumer confusion is unlikely, and infringement does not occur.
However, when trademarks directly compete or are related, the analysis becomes more complex. If two marks are sufficiently similar and the goods or services are directly competitive, infringement is usually found. In such cases, consumers may believe that the products or services are affiliated or may be unsure about the source of the goods or services. For example, consider two bicycle shops located near each other, one named "Flying Machine Bikes" and the other "The Flying Machine Bike Shop." Consumers might confuse the two shops, leading to uncertainty about the source or provider of the goods and services offered.
While proof of actual consumer confusion is not required, it serves as strong evidence of infringement when presented. Other factors that can influence the likelihood of confusion include the junior user's intent in adopting the mark, the quality of their products or services, and the sophistication of buyers. The Lapp test and the Polaroid factors are also used to assess the likelihood of confusion, considering factors such as the potential for the trademark owner to expand into the alleged infringer's market.
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Frequently asked questions
The Lanham Act.
The Lanham Act defines a trademark as "any word, name, symbol, or device, or any combination thereof" that a person uses "to identify and distinguish his or her goods".
Injunctive relief, an accounting of profits, damages, attorney's fees in "exceptional cases", and costs.
The Commerce Clause gives the federal government the power to regulate trademarks.
The U.S. Supreme Court has not specified which First Amendment test should be used for trademark laws. Lower courts have adopted the Rogers test, which comes from Rogers v. Grimaldi (2nd Cir. 1989).
