Trademarks are a form of intellectual property protection accorded to particular messages, slogans, brands, designs, or other types of expression. The primary federal trademark law, called 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 … from those manufactured or sold by others and to indicate the source of the goods.”
Those who register trademarks seek to ensure control over their expressive message or design. Thus, there is an inherent tension between trademark protection and the First Amendment freedom of speech. Many expressive works mention or refer to the trademarks of others. Sometimes, these expressive works satirize, parody, criticize, laud or otherwise use trademarks in their own message. A key question arises as to when a trademark owner can silence or shut down another’s expressive use of the trademark. In other words, when can a trademark owner bring a so-called trademark infringement action against another without violating the First Amendment?
Trademark law aims to protect owners and consumers
Trademark law also exists in part to protect consumers from confusion. A trademark infringement action serves this purpose by prohibiting others from using or infringing on trademarks in such a way as to create consumer confusion over brands. As Justice Elena Kagan explained in Jack Daniel’s Properties, Inc. v. VIP Products, LLC (2023), “[i]n the typical [trademark infringement] case, the owner of a mark sues someone using a mark that closely resembles its own.”
A valid trademark infringement claim must establish that the alleged infringer’s use of the trademark is for commercial purposes and causes a likelihood of consumer confusion.
While trademark law serves valuable purposes for producers and consumers, it can limit freedom of expression. When someone parodies or satirizes another’s trademark, such parody or satire may not create consumer confusion.
A trademark owner also might bring a so-called trademark dilution claim. This type of trademark claim argues that another’s expressive work harmed an existing trademark. A work may tarnish the value of an existing trademark or blur the meaning of an existing trademark.
In the Jack Daniel’s case, the Supreme Court refused to dismiss the whiskey maker’s trademark claim against a company selling a squeaky, chewable dog toy in the shape of a Jack Daniel’s whiskey bottle. The “Jack Daniel’s” name was changed to “Bad Spaniels” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” became “The Old No. 2 On Your Tennessee Carpet.” Kagan found that the company, VIP Products, was effectively using its toy’s resemblance to Jack Daniel’s trademark to sell its products.
Rogers test balances First Amendment-protected expression with trademark use
The U.S. Supreme Court has never explained in detail how trademark law is to be reconciled with the First Amendment. Many lower courts have adopted a test — called the Rogers test — that comes from a lower court decision Rogers v. Grimaldi (2nd Cir. 1989). The case involved an Italian film entitled “Ginger and Fred” that told the story of two Italian dancers. The great American actress and dancer, Ginger Rogers (who often danced with Fred Astaire) was not amused and sued for trademark infringement. The 2nd Circuit in Rogers v. Grimaldi created the following test:
“Where a title with at least some artistic relevance to the work is not explicitly misleading as to the content of the work, it is not false advertising under the Lanham Act. … This construction of the Lanham Act accommodates consumer and artistic interests. It insulates from restriction titles with at least minimal artistic relevance that are ambiguous or only implicitly misleading but leaves vulnerable to claims of deception titles that are explicitly misleading as to source or content, or that have no artistic relevance at all.”
The 2nd Circuit determined that the producer of the Italian film was entirely protected by the First Amendment because the title of the film was more artistic expression than commercial speech.
The fate of the Rogers test is unclear in trademark law; the U.S. Supreme Court did not apply it in the Jack Daniel’s case. Instead, Justice Kagan explained: “We do not decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes.”
Some commentators argue that there needs to be more protection for the First Amendment in trademark infringement law. For example, Christine Haight Farley and Lisa P. Ramsey wrote in “Raising the Threshold for Trademark Infringement to Protect Free Expression,” a 2023 law review article: “Our proposal is to add a broad fair use doctrine to trademark infringement law that allows for the informational or expressive use of another’s mark where the accused infringer’s expression is neither a false statement about its products nor likely to mislead a reasonable person about the source of the goods, services, or message.” (p. 1273).
Trademark law barring disparaging, scandalous words ruled unconstitutional
While the U.S. Supreme Court has not addressed directly how trademark infringement and dilution claims intersect with the First Amendment, it has invalidated two provisions of the Lanham Act as violative of the First Amendment. In Matal v. Tam (2017), the U.S. Supreme Court invalidated a provision of the Lanham Act that prohibited disparaging trademarks. Simon Tam, the lead singer of an Asian rock band called “The Slants” successfully argued that the disparagement clause rose to the level of impermissible viewpoint discrimination.
Two years later, the U.S. Supreme Court reached a similar result in Iancu v. Brunetti (2019), when it invalidated another provision of the Lanham Act that prohibited “immoral” or “scandalous” trademarks. The court also deemed this to violate the First Amendment because it amounted to the government disfavoring certain ideas and rose to the level of impermissible viewpoint discrimination.
The Supreme Court is considering another case in its 2023-24 term, Vidal v. Elster, regarding whether a provision in trademark law violates the First Amendment. This case arose when a Patent and Trademark Office examiner declined an application by Steve Elster to register the phrase “TRUMP TOO SMALL” to be used on items like t-shirts as political commentary on then-President Donald Trump and his policies.
The trademark office’s decision was upheld by the U.S. Court of Appeals for the Federal Circuit based on federal law which prohibits registering a mark that identifies a living individual without the person’s consent. The Supreme Court is considering whether the federal law violates the free speech clause of the First Amendment when the mark criticizes a public or government official or whether the law is a reasonable restriction protecting individual and consumer rights.
David L. Hudson, Jr. is a law professor at Belmont who publishes widely on First Amendment topics. He is the author of a 12-lecture audio course on the First Amendment entitled Freedom of Speech: Understanding the First Amendment (Now You Know Media, 2018). This article was published Nov. 6, 2023.