When is a Use in Commerce a Noncommercial Use?

Abstract:     
When is a use in commerce a noncommercial use? This question may sound like the opening for a ridiculous legal riddle, but it is a real conundrum in trademark dilution law. The current federal dilution statute, section 43(c) of the Lanham Act, creates liability based on the “use of a mark or trade name in commerce,” when that use is likely to blur or tarnish a famous mark. At the same time, the statute characterizes certain activities as non-actionable “exclusions,” including “any noncommercial use of a mark.” So the use of a mark in commerce can be a noncommercial use — but how, and why? This Article comprehensively examines the statutory exclusion for “noncommercial use of a mark” within the federal dilution statute. This includes the legislative history of the federal dilution statute, trademark and First Amendment jurisprudence, and court decisions to date interpreting the statute. Based on this research, the Article explains how courts and potential litigants should interpret the exclusion to achieve its purpose as a predictable, efficient defense that excuses a broad range of expressive uses.

Number of Pages in PDF File: 56

Keywords: trademark, dilution, noncommercial use, commercial use, First Amendment, free speech, commercial speech

Accepted Paper Series