Additional Material on Trademark Law

1. "Use in Commerce" - Vestigial Meaning Only

My friend Karsten Self contacted the CNI-COPYRIGHT mailing list on -- Coalition for Networked Information, "an organization dedicated to supporting the transformative promise of networked information technology for the advancement of scholarly communication and the enrichment of intellectual productivity". That correspondence follows:

Karsten inquired:

I'm interested in precedent and/or caselaw for use of trademark or service marks in non-commercial contexts. Most applicable would be publications or free-of-charge media services under a trademarked or service-mark protected name, logo, or brand.

My understanding of trademark law is that use is restricted to "use in commerce" (15 USC 1051(a)(3)(C). However I don't find a definition of "commerce".

There are numerous organizations which maintain identities but don't have commercial activities per se. And while I'm not sure if any of these use trademark or service mark protection, I suspect some do.

Guidance is appreciated.

"Chris Mohr" <> (of Meyer & Klipper, attorneys, Arlington, VA) replied:

Trademarks associate goods or services with their source. Use in commerce does not require a commercial purpose; it's just a term of art limiting the reach of the Federal act to its constitutionally prescribed bounds. States have their own similar trademark laws and their enactments require no interstate commerce nexis, and infringement suits are typically filed under both bodies of law. Furthermore, trademark protection does not require that a word, phrase or symbol be registered, so there's no real way to know in advance whether or not anyone will "claim" protection. It's better to assume that they will.

The real questions will probably involve whether (even if they seek to claim TM protection) these services have a protectable trademark interest in their names to begin with, and whether your use of those marks causes people to believe that you are the source of those media services. There is also a qualified privilege in the trademark law of "fair use."

Carol Shepherd <> (of Arborlaw Associates PLLC) replied:

You don't indicate whether you mean use by the "adoptee" of a mark, or use by third parties. The law with regard to use by third parties is a hot spot of concern right now, in terms of the intersection between First Amendment and fair use rights and the scope of protection offered by the law.

With regard to use by the adoptee which qualifies as use "in commerce" to support a claim of trademark rights, there is a lot of caselaw judicially interpreting the statute, and then there is the caselaw developed with regard to common law trademark protection. As a general rule, you don't have to be making money or be profit-oriented to be making a use "in commerce." To understand the parameters of this area, your best bet is to review a treatise such as McCarthy on Trademarks and Unfair Competition, which goes over the basics. Also, Federal trademark protection explicitly extends to various quasi-commercial affiliations such as certification (ie there is a special section of the Lanham Act for certification marks, which are not used commercially by the certifying body, but by those entities it has certified).

Or maybe you are asking about the "merchandising" of trademarks -- the use of a trademark or logo as an ornament or affiliation to add value to a product or service in a way unrelated to a designation of source, or function. This has been a hot area of development in the law. Trademark owners are pushing for merchandising protection over any usage of a mark, whether tied to the mark owner's products or services or not. Once again, this is an area where the caselaw is rapidly developing.

Hope this gives you some leads. INTA manages a mailing list for trademark issues which is fairly active called INTA-list; I'm not sure if there is a searchable archive or not.

Steven Jamar <> (Professor at Howard University School of Law) replied:

First, this is a copyright list, not one for trademarks.

Second, the term "commerce" is generally considered in the broadest possible sense. A use of a pet name for a friend or family member would not be commerce. The use of that same name to brand anything in general, even if not for profit, would be use in commerce. I could create a Web site called "Steve's Iluminatifarie Insight Sight" and dispense advice or whatever and probably get a TM for it, even though no money is involved and few folk every visit my words of wisdom.

Playboy Enterprises, Inc. v. Welles 279 F.3d 796 (2002).

Defenses against a claim of trademark infringement are similar to those available in copyright infringement cases. In fact, the "fair use" doctrine has probably been the most successful defense in Internet-related cases to date, as demonstrated by Playboy Enterprises, Inc. v. Terri Welles, 7 F.Supp. 2d 1098 (S.D. Cal. 1998) and discussed by the Ninth Circuit Court of Appeals in Brookfield.

2. Additional relevant articles and cases
Trademark Fair Use

In short, the Lanham Act provides in section 33(b)(4) a statutory defence to any claim of trademwark infringement where 'the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin. . . ."

Also, judges have added these defences via caselaw: (1) nominative "fair use"; (2) comparative advertising as "fair use" and (3) parody as "fair use".

Mattel Inc. v. MCA Records Inc., 2002 DJDAR 8297 (9th Cir. July 25, 2002).

Mattel brought a second claim under the Federal Trademark Dilution Act, 15 U.S.C. Section 1125, arguing that "Barbie Girl" diminished Barbie's capacity to identify and distinguish Mattel's products and tarnished the mark because the song is inappropriate for young girls. Again, the 9th Circuit disagreed.

Trademark dilution occurs when a mark loses its uniqueness or is tarnished when it is used by infringers to identify different, unauthorized products. [...]

But the Federal Trademark Dilution Act contains three statutory exemptions. One of them, for "noncommercial use," saved "Barbie Girl." (The two other exemptions - for comparative advertising and for news reporting and commentary - did not apply.)

The 9th Circuit faced a statutory conundrum in the act. For dilution to occur, the statute requires a "commercial use in commerce" of the mark. Yet there is an express exemption for "noncommercial use." If "commercial use" has the same meaning in both provisions, that would eliminate one of the statutory exemptions because any use found to be dilutive could not, by definition, be noncommercial.

The 9th Circuit feared that this inconsistency would create a constitutional problem because it would leave the act without enough First Amendment protection for dilutive speech.

To resolve the problem, the 9th Circuit looked to legislative history and "Tootsie." The act's history confirms that the "noncommercial use" exemption incorporated the concept of "commercial speech" from the First Amendment arena.

To determine whether "Barbie Girl" fell within the exemption, the 9th Circuit looked to its definition of "commercial speech" in First Amendment case law and to its decision in actor Dustin Hoffman's lawsuit against a magazine for publishing a digitally altered image of his "Tootsie" film character. Hoffman v. Capital Cities/ABC Inc., 255 F.3d 1180 (9th Cir. 2001).

In Hoffman, the 9th Circuit defined commercial speech as that which does "no more than propose a commercial transaction"; speech that does something else besides proposing a commercial transaction (such as parody, satire or editorial comment) is not "purely commercial" and is entitled to full First Amendment protection.

The 9th Circuit applied its "Tootsie" holding to Barbie. While MCA used Barbie's name to sell copies of "Barbie Girl," a commercial purpose, the court found that the song's parody of the Barbie image and its social commentary is protected speech. Therefore, the song falls within the "noncommercial use" exemption, and there is no trademark dilution.

The battle over Barbie provides an important lesson: It is lawful to use trademarks, especially those in the public vernacular, for expressive speech purposes. For any creator of artistic works, the practical ramification is clear: If an artist wants to use someone's trademark for an artistic work, make sure it is used for a protected purpose, such as parody, not just to draw attention to the artist.

But the Barbie decision leaves a few things unclear. Although the 9th Circuit adopted the Rogers test, that test was meant to evaluate whether the title of a literary work infringes a trademark. It is uncertain whether the court intended the test to be used for all trademarks that have become part of the public vocabulary. Nor does the decision draw a bright line between commercial and noncommercial speech, a line that invariably will remain fuzzy.

In the end, things became a bit messy in the house of Barbie when the litigants traded barbs with each other in the press. MCA countersued for defamation based on Mattel's media comments analogizing MCA to a "bank robber" committing a "heist." The 9th Circuit dismissed this as rhetorical hyperbole and ended its opinion with advice for the litigants: "The parties are advised to chill."
Barbie Parody
Prevails over Trademark
August 1, 2003

Crash course on trademarks: Limitations on trademark rights

Trademark law forbids certain kinds of "use" of a trademark, but is not unlimited in scope. For example, noncommercial use of the trademark is difficult to stop, unless the mark is diluted in some way. Also, trademark rights are exhausted when a trademarked product lawfully enters the market. The trademark holder then normally can no longer act against resale of the trademarked product.

Article doesn't say much about the legal issues, but notes a trend towards legally baseless trademark litigation against non-commercial Web sites by firms that don't bother to check for commerce or likelihood of customer confusion.

Article about why the 1995 Federal Trademark Dilution Act has proven to be mostly toothless: Plaintiff owners of "famous and distinctive marks" are required to show that third-party usage "causes dilution", meaning objective proof of actual injury to the economic value of a famous mark, not just claimed potential injury. This is an even more serious hurdle than the high standard enunciated in 15 USC 1125(c)(1) as to what qualifies as a "famous" mark.

The article notes that state dilution statutes' standards, by contrast, are various and often more friendly to plaintiffs.

The full list of relevant Federal statutes:

1. The original 1946 Lanham Act, 15 USC.
2. The 1995 Federal Trademark Dilution Act, which amended the Lanham
Act and thus became 15 USC 1125(c).
3. The 1999 Anti-Cybersquatting Protection Act, which also amended the
Lanham Act and thus became 15 USC 1125(d).