Protecting Government Owned Trademark Rights

Query: Is a state actor (let’s say Alabama) able to enforce its trademark rights to the same extent as a non-governmental actor? Or does the First Amendment place additional restrictions on its behavior?

12 thoughts on “Protecting Government Owned Trademark Rights

  1. Is a state actor (let’s say Alabama) able to enforce its trademark rights to the same extent as a non-governmental actor? Or does the First Amendment place additional restrictions on its behavior?

    Maybe another way to think about this: does the First Amendment provide the speaker with additional defenses and/or does it raise the burden of proof for the government?

    Take a libel law. “Texas is a corrupt state and is breaking Federal law!” I say. Let’s say Texas isn’t breaking any Federal law. So the State of Texas tries to sue me for libel. The State will (arguably) have the weaker case against me relative to an ordinary private person because my speech is political in nature and because Texas is the equivalent of a “public figure.”

    Now consider Texas using a trademark to keep me from saying the same phrase. It’s disparaging but that’s no longer an issue. Is it a “good or service or advertising”? That would seem to be the dominant question and it’s definitely one of the points where the First Amendment considerations are baked into the law. If we somehow we get past that, then it seems that the other considerations discussed above might enter into the picture.

    1. Nicely adjusted Malcolm –

      1. (Of course, as I commented earlier, trademarks are NOT a de facto “cannot say” type of thing, so you will need to go a bit deeper with your analogies to provide an infraction that rises to your “speech” concern.

        1. …vis a vis: “Now consider Texas using a trademark to keep me from saying the same phrase.” – you are going to have to do a LOT MORE to substantiate this part of your hypothetical.

          I do not think that you can get there from a Trademark law perspective, so your overall “First Amendment” concern is not reached.

  2. If not, then all D1 schools have a real money problem.

  3. Interesting question. Did you have a specific fact pattern in mind?

    Seems to me that the First Amendment should apply to “trademark law” in exactly the same way it applies to any other law that squelches speech. That is, it doesn’t matter if the government is using the government’s law to stop me from speaking or if some “private person” is using that same law to stop me from speaking. At the end of the day, it’s the government’s law that’s squelching my speech and so the First Amendment needs to be dealt with.

    Unfortunately for everybody (except — surprise! — the world’s richest people) US trademark law has “evolved” in such a way that it has managed to snake past the First Amendment. It’d be nice to see the head of that snake and most of the first third of the body cut off but corporate America would throw a hissy fit so huge it would make all this subject matter eligibility whining seem like laughter.

    US patent law is headed in the same direction, as everyone knows. But some of us aren’t asleep at the wheel, much to the chagrin of the usual parasites.

    1. Wow – you are so full of yourself.

      I see that you are still anointing yourself watcher over the fields of patent rye.

      As to the issue itself, First Amendment is known to have carve outs (“Fire” in a crowded theater). Would the trademark system be a (not similar in content, but similar in form) carve-out?

      Remember as well, Trademark protection is NOT a universal “you can’t use the words of the mark,” but rather, it is a you cannot use the words of the mark in a selective way.

      On what basis would that selective “keep out” not apply based on who the mark holder is?

      1. As to the issue itself, First Amendment is known to have carve outs (“Fire” in a crowded theater).

        Deep deep stuff here.

        1. Malcolm, your noise to signal ratio is damm near infinity.

          Maybe – just maybe – spend a little effort on the IP portions of the thread topic.

  4. On the face of it, trademark enforcement doesn’t seem materially different from other forms of state action, so the First Amendment would apply.

    One very recent case on point would be Gerlich v. Leath, 861 F.3d 697, 705 (8th Cir. 2017) (holding that a state university “created a limited public forum when it made its trademarks available for student organizations to use if they abided by certain conditions”).

    A possible counterargument, and one with some tangential support in other First Amendment cases, would be that government-owned marks are effectively government speech, and thus outside the First Amendment scope. (This argument of course works best in situations where the government doesn’t do what the university did in Gerlich.)

    1. Thanks – interesting:

      “ISU created a limited public forum when it made its trademarks available for student organizations to use if they abided by certain conditions. The defendants’ rejection of NORML ISU’s designs discriminated against that group on the basis of the group’s viewpoint. ” Gerlich v. Leath, No. 16-1518 (8th Cir. Jun. 13, 2017)

      link to casetext.com

    2. Yes, and note that early this year the Sup. Ct. gave worse than zero credence to arguments that trademarks were “government speech” in their unanimous decision in MATAL v. TAM.

      Comment 3 above is correct. State universities and colleges are making more and more income from the direct sales of, or trademarked licensed sales of, T shirts, sweat shirts, caps, key chains, beer mugs and almost anything else imaginable marked with school names, colors, logos, or team names. Even though in some cases a state school had previously failed to register some of these images or names as federal and/or state registered trademarks or even failed to go after some unlicensed such TM use for many years.

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