Free Speech Challenges to Trademark Law After Matal v. Tam

Abstract

Trademark laws and free speech are on a collision course. In Matal v. Tam, the U.S. Supreme Court clarified that trademark laws are speech regulations subject to First Amendment scrutiny when it held that the federal trademark law denying registration to potentially disparaging marks was unconstitutional. Tam opens the door to wide-ranging free speech challenges to trademark laws in the United States. Most trademark laws should survive constitutional scrutiny after Tam, including laws that facilitate the communication of source-identifying product information, promote fair competition, and protect consumers from misleading uses of marks. Some laws will not. For example, if courts apply the U.S. Supreme Court’s traditional First Amendment jurisprudence to trademark dilution law, they should find this statute to be an unconstitutional regulation of non-misleading commercial expression.

We should also consider whether the First Amendment right to freedom of expression is harmed when the government registers and protects trademark rights in certain language and product features that intrinsically communicated a non-source-identifying message before they were adopted or used as marks. Examples include words and designs that are descriptive, common, informational, or culturally-significant, and colors, representational shapes, and other pre-existing terms, symbols, or devices that were inherently valuable before they were claimed as marks. Regardless of whether these marks are deemed to be non-functional and distinctive after use in the marketplace, granting and enforcing trademark rights in this inherently valuable expression chills non-misleading speech protected by the First Amendment and may be unconstitutional after Tam. At a minimum, Congress should clarify in the trademark statute that these marks only have a narrow scope of protection and it should add more statutory defenses.

Keywords: Trademark, Free Speech, Freedom of Expression, First Amendment, Constitutional Law, Matal v. Tam

JEL Classification: K00, K33, O34