First Amendment Limitations on Trademark Rights

INTELLECTUAL PROPERTY AND INFORMATION WEALTH: ISSUES AND PRACTICES IN THE DIGITAL AGE, vol. 3, p. 147, Peter K. Yu, ed., Praeger 2007

San Diego Legal Studies Paper No. 07-86

29 Pages Posted: 7 Mar 2007 Last revised: 2 Oct 2008

Lisa P. Ramsey

University of San Diego School of Law

Abstract

The First Amendment's free speech clause limits the government's ability to grant and enforce trademark rights in words, names, and symbols. Congress and courts currently incorporate free speech values directly into certain parts of trademark doctrine. Congress protects free expression in the Federal Trademark Act, more commonly known as the Lanham Act, by only granting rights in distinctive marks, limiting exclusive trademark rights, and allowing certain defenses, such as the fair use defense. When interpreting the Lanham Act, some courts have protected expression by narrowly construing trademark rights and broadly applying statutory and common law defenses. A few have even considered an independent First Amendment defense. Certain judges have also taken First Amendment interests into account when drafting remedies in trademark cases.

Despite this deference to First Amendment interests in the trademark statute and litigation, Congress and courts have also allowed trademark law to suppress expression that is constitutionally protected. Trademark law unduly restricts the free flow of commercial expression when firms are allowed to register and protect trademarks consisting of descriptive terms and catchy slogans. Some common law trademark doctrines, such as the doctrine of initial interest confusion, may limit consumers' access to information about competing goods on the Internet. When construing the Lanham Act, some courts have not adequately protected the unauthorized use of another's mark in expression on the Internet and in artistic works. This chapter analyzes how Congress and courts currently protect, and fail to protect, First Amendment values when granting and enforcing trademark rights.

Keywords: First Amendment, Constitutional, Unconstitutional, Trademark, Lanham Act, Intellectual Property, Descriptive Trademarks, Slogans, Infringement, Dilution, Cybersquatting, Commercial Use, Misleading Use, Trademark Use, Fair Use, Nominative Use

JEL Classification: K00

Suggested Citation

Ramsey, Lisa P., First Amendment Limitations on Trademark Rights. INTELLECTUAL PROPERTY AND INFORMATION WEALTH: ISSUES AND PRACTICES IN THE DIGITAL AGE, vol. 3, p. 147, Peter K. Yu, ed., Praeger 2007; San Diego Legal Studies Paper No. 07-86. Available at SSRN: https://ssrn.com/abstract=968721

Lisa P. Ramsey (Contact Author)

University of San Diego School of Law ( email )

5998 Alcala Park
San Diego, CA 92110-2492
United States

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