Trademarks are words, names, symbols, devices, and other signs that provide information about the source of goods or services. They help consumers identify and distinguish among competing products. An example is “Twix” used as a trademark for candy bars sold by Mars, Inc. If someone likes the Twix caramel-topped biscuit covered in chocolate better than “Ferrero Rocher” hazelnut chocolates sold by Ferrero S.p.A. or “PayDay” chocolate bars with peanuts and caramel sold by the Hershey Company, that customer can use the word Twix and the product’s packaging design with the colors gold, red, and white (also known as the product’s trade dress) to find it quickly and easily at the grocery store or in an online marketplace. These words, logos, and designs help us determine who made or is responsible for these products.

Trademark laws are government regulations of language, designs, and other types of expression used to communicate about the source of goods and services. These laws allow companies, organizations, and people to register their marks with regional, national, and state trademark offices, and protect them against certain unauthorized uses by others in the course of trade that infringe the mark or dilute its distinctive quality.Footnote ¹ Thus, a competitor of Mars, Inc. cannot advertise or sell candy bars under the brand name “Twix” or a similar phrase (such as “Twixy”), or use an identical or confusingly similar gold, red, and white packaging design for its candy. When trademark laws ban the confusing use of another’s trademark, they reduce the likelihood that consumers will be deceived into purchasing an undesired product. They also protect the trademark owner’s reputation and goodwill symbolized by its mark, and promote fair competition in an industry.

In this book, I explain how some trademark registration and enforcement laws harm legitimate competition and free speech by discouraging or suppressing the use of nonmisleading language, designs, and product features protected by the right to freedom of expression.Footnote ² While some trademark applicants claim they have a free speech right to register certain marks, my main argument in this book is that this fundamental right should be invoked to prevent the registration and broad trademark protection of subject matter that had substantial pre-existing communicative value in an industry or community before it was claimed as a mark.

Governments safeguard the right to freedom of expression for a variety of reasons. As discussed in Chapter 2, protection of the free speech right benefits society by creating a marketplace of ideas, which is more likely to lead to the discovery of truth. It also supports democratic self-governance, furthers individual autonomy, and encourages the tolerance of different viewpoints, among other things. It allows us to criticize, comment on, or poke fun at the government, companies that sell products, nonprofit organizations that provide services, and people like politicians and celebrities. Moreover, the free expression right shields both noncommercial speech and commercial speech from unjustified government regulations. Members of the public may be interested in learning about the price and quality of commercial products for sale, or the latest film or book, and not just want to talk or learn about their political leaders, proposed legislation, court decisions, or social issues. Moreover, protecting the free flow of nonmisleading information, ideas, and products can help increase fair competition in the marketplace. One of my primary critiques of current trademark law is that it allows a single company, organization, or person to obtain exclusive trademark rights in inherently valuable words, names, designs, colors, and shapes used in connection with goods or services in circumstances where that subject matter should remain in the public domain available for use by everyone in the marketplace.

For example, under regional, national, and state trademark laws today, it is possible to register terms describing the goods or services in an industry. An example is the word “Pho”, the name of a Vietnamese soup made with broth, rice noodles, herbs, and thin slices of chicken or beef, which was registered in 2007 in the United Kingdom (UK) as a mark for restaurant services.Footnote ³ The trademark registrant used this mark in connection with a chain of “Pho” restaurants in London selling pho and other Vietnamese food, and enforced its trademark rights against other Vietnamese restaurants using the word “Pho” in their names, such as Mo Pho Viet Café.Footnote ⁴ Due to backlash caused by criticism on social media of this trademark registration, Pho Holdings Limited surrendered its UK registration for the “Pho” mark in October 2024.Footnote ⁵

Companies, organizations, and people also own exclusive trademark rights in political and social messages, trending words and humorous phrases commonly displayed on T-shirts, the names of prominent leaders and historical figures, popular colors, interesting shapes, and other intrinsically attention-grabbing subject matter that expresses ideas or decorates products or packaging. Examples of phrases currently registered by the United States Patent and Trademark Office (USPTO) as marks for clothing that convey messages include “Prejudice is Ignorance”, “Sexy Grandpa”, “Surf’s Up USA”, and “Take a Hike!”Footnote ⁶ The pun “Lettuce Turnip the Beet” is another example.Footnote ⁷ Other examples of marks registered for apparel which have been cancelled due to the registrant’s failure to provide the USPTO with evidence of continued use of the mark include “America the Beautiful”, “Birthday Girl”, “Bride to Be”, “Merry Christmas Bitches”, “Mommy Needs a Cocktail”, and “World’s Greatest Dad”.Footnote ⁸ Culturally significant creative works currently or formerly protected by copyright law are also registered as marks for various goods and services. An example is the (now-cancelled) trademark registration in the United States (US) for precooked sausages owned by a French company for a mark consisting of an illustrated drawing of Leonardo da Vinci’s Mona Lisa painting.Footnote ⁹

Trademarks must be distinctive (i.e., identify a product’s source and distinguish it from other products) and satisfy other requirements before they can be registered and protected as marks. Unfortunately, trademark offices mistakenly register nondistinctive marks and grant trademark rights in language, designs, and other signs with strong pre-existing communicative value unrelated to the reputation of the party claiming trademark rights. (For the sake of brevity, when I use the words “trademark” or “mark” in this book, this term includes trademarks for goods, service marks for services, and the trade dress of goods or services – including colors, two-dimensional surface designs, three-dimensional shapes or configurations of products or packaging, the décor of a restaurant or store, and other features of goods, services, and packaging.Footnote ¹⁰ I also use the word “products” to refer to both goods and services, and “subject matter” or “signs” to refer to language, personal names, designs, and other things that are eligible to serve as a mark under trademark registration laws.)

Trademark enforcement laws conflict with the right to freedom of expression when they ban or punish unauthorized use of another’s mark in nonmisleading expression that provides product information, expresses ideas, or decorates goods or services in ways that have value to consumers for reasons unrelated to the trademark owner’s reputation. Trademark laws are also inconsistent with the free speech right when they allow trademark owners to register or obtain a broad scope of trademark rights in words, names, symbols, colors, shapes, creative works, and other features of products or packaging with substantial inherent informative, expressive, or decorative value. Trademark infringement and dilution laws may allow certain fair uses of another’s mark, such as descriptive fair use of the mark and use of the mark in comparative advertising, news reporting, and parody. In some jurisdictions, the trademark owner cannot prevail without proving commercial use of the mark by the defendant (use of the mark in the course of trade with the goods or services), or the defendant’s use of the plaintiff’s mark as a trademark to designate the source of its own products. The problem is that the defensive doctrines available to defendants often have limited application due to their narrow scope and vary depending on the country or geographic region where the court is located. Some parties falsely accused of trademark violations may settle after they receive a cease-and-desist letter or trademark complaint filed with a court because they cannot afford to litigate to a successful result in a trademark dispute.

It is also common today for trademark owners to file notice-and-takedown complaints with online marketplaces, auction sites, print-on-demand websites, app stores, internet search engines, social media sites, and other platforms that host product sales or communications by third parties, and demand removal of the products or expression due to alleged trademark violations by the company’s sellers or users in connection with their product listing, app, advertisement, username, or post.Footnote ¹¹ To avoid being sued and held liable for contributing to another’s infringement, that private entity may immediately take down the product listing or expression that includes the registered mark without considering whether this use of the mark satisfies trademark law’s requirements for liability or qualifies for a trademark defense. Some private platforms allow their sellers or users to challenge a trademark complaint against them through a counter notice procedure. They may only remove the material if the accused infringer does not respond to the complaint or the trademark owner obtains a court order finding the defendant liable for trademark violations. Other private platforms may not have these types of speech-protective and pro-competitive trademark dispute resolution procedures that can be invoked when the complaint is groundless. They may just suppress all unauthorized uses of the registered mark by others due to the risk of liability and the cost of determining on a case-by-case basis whether that mark is valid or infringed.

These types of private trademark dispute resolution systems can work well for trademark owners when a counterfeiter is infringing its mark in an online marketplace or other places where products are sold or advertised. Large and small trademark registrants alike can benefit from the ability to enforce their trademark rights in such an inexpensive and expeditious manner, often without an attorney’s assistance. Unfortunately, these private takedown procedures can harm expressive values and fair competition if the trademark should never have been registered in the first place, or if a judge or jury would probably find in litigation that there is no infringement by this unauthorized use of the registered mark to convey product information, express ideas, or decorate the products.

A Inherently Valuable Expression in Trademark Law

This book explains in detail how trademark registrations for what I refer to as “inherently valuable expression” can be invoked by their owners to stifle nonmisleading commercial and noncommercial messages protected by the right to freedom of expression. I use the phrase inherently valuable expression to collectively refer to words, personal names, symbols, features of products or packaging, and other signs that had pre-existing informational, expressive, or decorative value before they were adopted or first used as a mark by the alleged trademark owner.Footnote ¹² Governments should consider not registering subject matter with substantial inherent value or, at a minimum, not protect broad trademark rights in such marks. As I discuss later in Chapter 6, trademark offices and courts can determine whether expression had substantial inherent value before it was first claimed as a mark by focusing on the alleged mark’s content (e.g., its dictionary definition, or the fact it was a trending phrase or popular design or feature at that time), the type of products sold or provided under that sign, and whether the sign is used, or likely to be used, by the trademark owner or third parties in a location that conveys product information, expresses ideas, or decorates the product or packaging (e.g., in a list of product ingredients, or on the outside surface of T-shirts rather than just on their inside label or a hangtag attached to the goods). Below are examples of broad trademark rights claimed in descriptive terms, popular words and designs typically displayed in an expressive or decorative manner on clothing and similar merchandise, and other expression with substantial inherent value.

Descriptive marks. At the time of this writing, “UFO” is registered in the United States by UFO Magazine, Inc. as a mark for a print magazine about unidentified flying objects (commonly known as UFOs) and related phenomena, and for entertainment services in the nature of a television series, motion picture series, and multimedia publishing.Footnote ¹³ In April 2022, UFO Magazine filed an infringement lawsuit against Showtime Network, Inc. based on the entertainment company’s use of the title UFO for a four-part documentary series about unidentified flying objects and extraterrestrial phenomena.Footnote ¹⁴ The district court dismissed this lawsuit on November 3, 2022 after concluding that Showtime’s use of the “UFO” mark did not constitute infringement.Footnote ¹⁵ This ruling protects expressive values and legitimate competition in this industry, but I believe these public interests would have been better served if “UFO” was never registered as a mark for these goods and services due to the inherent value of that term when used with those communicative products.Footnote ¹⁶

Trademark litigation is expensive.Footnote ¹⁷ Individual authors, documentary filmmakers, and smaller entertainment and publishing companies accused of infringing the “UFO” mark may not have the financial resources to defend a similar lawsuit. Upon receiving a cease-and-desist letter or being served with a trademark complaint, some accused infringers using the term “UFO” within the titles of their creative works may settle with UFO Magazine and agree to self-censor their use of the mark despite the fact this term provides useful information about their products.

This is what happened in 2018 when author Faleena Hopkins obtained a trademark registration through her company Hop Hop Productions, Inc. for the word “Cocky” used in connection with a series of romance novels.Footnote ¹⁸ Her books in The Cocky Series were about brothers with the last name Cocker and their children who have a cocky or arrogant personality. Examples of her book titles are Cocky Cowboy, Cocky Heart Surgeon, and Cocky Senator. When Hopkins learned of other romance authors selling books with titles containing the word “Cocky”, her company demanded that the competing authors change the titles of their books to avoid infringing the registered mark. Some accused infringers agreed to self-censor their use of the word “Cocky” after confirming that Hopkins owned a trademark registration for this descriptive term. For example, Australian authors T.L. Smith and Melissa Jane changed their book title from Cocky Fiancé to Arrogant Fiancé.Footnote ¹⁹

The owner of the “Cocky” registration also contacted Amazon through its complaint procedure and demanded that Amazon remove the books of Hopkins’ competitors from the Amazon marketplace and Audible (Amazon’s store for audiobooks) if the book title contained the word “Cocky”. After receiving the takedown notice from Amazon, Jamila Jasper decided to replace the Cocky Cowboy title of her romance novel with the longer title The Cockiest Cowboy to Have Ever Cocked. Amazon complied with the trademark registrant’s request and suspended sales of romance novels like Tara Cresent’s Her Cocky Doctors and Her Cocky Firefighters. As the complaining party owned a registration for “Cocky” for a series of romance novels, Amazon likely decided in these circumstances that it was better to avoid a trademark infringement lawsuit than to protect the free speech right of competing authors to use the word “Cocky” in their book titles. When authors and the Romance Writers of America trade association complained about Amazon’s removal of these books, Amazon reinstated them and said it would no longer remove product listings for books with “Cocky” in the title without a court decision favoring the trademark owner. Hopkins’ company filed a trademark lawsuit against Cresent, author Kevin Kneupper, and book publicist Jennifer Watson, but the parties settled and Hopkins surrendered her “Cocky” trademark registration for cancellation.Footnote ²⁰ This is ultimately a speech-protective result, but this private suppression of expression with substantial informational value should never have occurred in the first place.

Another example of a descriptive mark invoked by its trademark owner to suppress nonmisleading expression is “Entrepreneur”, which Entrepreneur Media, Inc. registered as a mark for magazines, books, and other products related to developing and operating a business.Footnote ²¹ Entrepreneur Media has enforced its trademark rights in several different court proceedings against companies and people using this word for its inherent dictionary meaning in business names, publication titles, and other contexts, and obtained default judgments against many of them.Footnote ²² The trademark registrant also complained when Ray Hivoral used the word entrepreneur in connection with a business to support innovation and job creation called the “San Diego Entrepreneur Center” and organized “San Diego Entrepreneur Day.”Footnote ²³ In addition, Entrepreneur Media sued small businessman Scott Smith for infringement based on his use of the word entrepreneur within the name of his public relations firm “EntrepreneurPR” and the title of a quarterly periodical called Entrepreneur Illustrated.Footnote ²⁴ Smith lost that lawsuit, and currently operates an account on the social media site X (formerly known as Twitter) that complains about Entrepreneur Media’s aggressive enforcement of its “Entrepreneur” mark.Footnote ²⁵

Trademark enforcement laws contain vague language and do not require the parties’ products to be identical or similar for liability. This allows owners of trademark registrations for descriptive terms to claim they have broad trademark rights that can be invoked to stop the use of identical or similar terms with dissimilar goods or services. One example involves Chooseco LLC, the owner of the US registration for the mark “Choose Your Own Adventure” for a series of books for young adults.Footnote ²⁶ These popular books allow readers to choose where the story leads, and usually include the characters having an adventure. In 2007, Chooseco sued car manufacturer DaimlerChrysler when it featured the tagline “Choose Your Adventure” in an advertising campaign for the Jeep Patriot. The trademark registrant claimed DaimlerChrysler was acting in bad faith to target fans of the “Choose Your Own Adventure” brand of books and falsely created an association between its advertisement and the trademark owner’s book series.Footnote ²⁷ The case settled before the court could determine whether the automobile company infringed Chooseco’s registered mark.Footnote ²⁸

DaimlerChrysler may have been free riding when it used the phrase “Choose Your Adventure” in its advertisement, but Chooseco was definitely free riding off the inherent value of the descriptive words it claimed as a mark for its book series. Trademark laws should not encourage trademark owners to use descriptive terms as marks and file lawsuits against others when consumers are unlikely to be confused about the source of the products or advertisement, and the accused infringer’s use of this language does not impair the mark’s ability to identify the source of the trademark owner’s products. Some consumers may think of Chooseco’s book series when they hear “choose your adventure” in an advertisement for automobiles, but that does not mean DaimlerChrysler’s expression harms the trademark owner or the public in any material way that should be actionable under trademark law. It is arguably better if trademark offices do not register descriptive terms as marks, as such registrations can be invoked to suppress nonmisleading messages. If these types of marks are registered, however, courts can better protect expressive values and fair competition if trademark enforcement statutes clarify that owners of descriptive marks only have a narrow scope of trademark rights even when the marks acquire strong commercial strength or fame through extensive use in the marketplace.

Expressive merchandise. Other examples of expression with substantial inherent value in trademark law are political and social messages, popular or trending phrases, words and symbols valuable to religious or indigenous communities, and other interesting or attention-grabbing language and designs claimed as trademarks for clothing, home décor products, and other types of expressive merchandise. Examples include “Keep America Great”, “Black Lives Matter”, “Super Heroes”, “God Bless the USA”, and “Cherokee”.Footnote ²⁹ In this book, I use the phrase “expressive merchandise” to describe products desired by people who like to wear clothing or use or display goods that prominently feature messages on their outside surface in an expressive or decorative manner. In addition to T-shirts, this includes hats, socks, jewelry, wristbands, mugs, flags, posters, wall hangings, decorative pillows, tote bags, keychains, bookmarks, ornaments, pens, stickers, and similar products often sold at tourist shops. (Examples of goods which are not expressive merchandise are refrigerators and strawberries.) While intrinsically communicative words and symbols are sometimes registered as marks, this is not always the case. For example, the UK Intellectual Property Office refused to register the following phrases for clothing: “Rockstar”,Footnote ³⁰ “Come to the Dark Side”,Footnote ³¹ the motivational phrase “Keep Calm and Carry On” paired with an activity (“Camping”, “Fishing”, “Golfing”, “Drinking”)Footnote ³² or city (“London”),Footnote ³³ and a pun (“Keep Calm and Curry On”) of that slogan included on posters produced by the UK Government in preparation for World War II and commonly displayed today on goods sold in UK souvenir shops.Footnote ³⁴

When common phrases and symbols and other types of inherently valuable subject matter are registered as trademarks for expressive merchandise, their trademark owners often enforce their trademark rights in courts and online marketplaces against competitors who prominently display the words or designs only in an expressive or decorative manner on the front of clothing and similar products. An example discussed in Chapter 1 is Lifeguard Licensing Corp., the owner of trademark rights in the word “Lifeguard” for various products.

Other types of inherently valuable expression. Additional examples of expression with substantial inherent value claimed as marks in the United States are the names of important historical leaders and religious figures (such as “George Washington” for educational services and “Jesus” for clothing), famous landmarks (such as New York’s Statute of Liberty, which is included in a logo for insurance services), popular colors (such as black packaging for flowers and live cut floral arrangements), three-dimensional shapes of things in nature (such as a skull-shaped bottle for alcoholic beverages sold under the brand name “Crystal Head Vodka”), and culturally significant creative works that are important to our cultural heritage (such as an illustration of Leonardo da Vinci’s Mona Lisa painting registered as a mark for precooked sausages).Footnote ³⁵ The word “emoji” – which refers to popular small digital images or icons used in text messages and social media posts to convey information, ideas, or emotionsFootnote ³⁶ – is another example. A German company registered the mark “Emoji” for several different products and enforced its trademark rights against companies that used this term for its inherent meaning to describe their products featuring emoji designs.Footnote ³⁷ Inherently valuable expression can also include decorations that are typical in a certain type of restaurant or retail store, such as the Mexican restaurant chain Taco Cabana’s trade dress or décor which consists of a “festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals.”Footnote ³⁸

From a free speech and pro-competition perspective, everyone advertising and selling products should be able to use words, names, symbols, and features like this that intrinsically convey information, express ideas, or decorate products in a useful, interesting, or aesthetically appealing manner that does not cause confusion about the product’s source. The scope of rights in these marks should be narrow regardless of whether they have acquired distinctiveness and become well known through use in the marketplace.

Governments should consider whether they achieve the correct balance between trademark and free speech rights when they allow trademark offices to register signs that had substantial inherent value before they were claimed as a mark. While courts can protect free expression and fair competition when the trademark owner attempts to enforce its rights in litigation, it is better if legislatures ensure their trademark offices and courts have the proper legal tools to refuse to register or protect trademark rights in subject matter with substantial pre-existing informational, expressive, or decorative value. They should not ignore the fact that a significant amount of trademark enforcement takes place in the private sphere through cease-and-desist letters sent to accused infringers and notice-and-takedown complaints filed with online marketplaces or other online platforms.

One of my main contributions in this book is my detailed explanation of why the free speech right limits what subject matter can qualify as a trademark, and my argument that this right should not just be invoked to strike down trademark registration laws that discriminate based on viewpoint, or to limit the scope of trademark rights or remedies. I encourage trademark offices to not register these types of inherently weak marks. If marks with substantial inherent value are registered, however, courts should only protect a narrow scope of trademark rights in these marks against unauthorized uses where (1) the parties’ marks and products are identical (or almost identical), (2) the accused infringer used the mark as a trademark to designate the source of its own products, and/or (3) it used the mark in a false statement about its products (e.g., an explicitly false claim that the products are licensed) or in a way that is likely to mislead a reasonable person about the source of its goods, services, or message. In addition, regardless of whether a mark had substantial inherent value when it was first claimed as a mark, legislatures should consider enacting more speech-protective and pro-competitive requirements for trademark liability and defenses applicable in all trademark lawsuits to provide clearer and more predictable guidance on what uses of another’s mark are allowed by trademark law. I discuss examples of current trademark registration and enforcement laws in Chapters 4 and 5, and propose reforms of these laws in Chapter 7.

For the sake of brevity, I do not discuss the intricacies of competition law in this book. Instead, I make the following assumptions about legitimate competition and its relationship to trademark law, which are likely unobjectionable to most people: Fair and undistorted competition in an industry can result in increased choices for a certain type of product, lower prices, and higher product quality, which benefits consumers and competitors that want to compete honestly in the marketplace. Established companies and new entrants to the market should be able to make and sell the same products and compete on the basis of price, quality, or other attributes unless there is a strong justification for limiting competition in this context. Suppressing the use of certain words, names, images, designs, or product features may be justified if this expression violates laws regulating trademarks, copyrights, industrial designs, patents, the rights of privacy or publicity, false advertising, or unfair competition, but otherwise competitors should generally be able to use words, names, symbols, colors, shapes, and other features in connection with their advertising and sale of commercial goods or services, or their provision of noncommercial goods or services. Under this approach, Mars, Inc. cannot stop its competitors from using the word “chocolate” or selling a candy bar that consists of a caramel-topped biscuit covered in chocolate. But Mars can invoke trademark law (and possibly other laws) to stop others from using a mark that is identical or confusingly similar to “Twix” or the Twix packaging design to confuse consumers about the source of the accused infringer’s candy, advertisements, social media posts, or other messages conveyed to the public.

B A Free Speech Framework for Trademark Law

Chapter 3 of this book focuses on my proposed framework for evaluating potential conflicts between trademark laws and the right to freedom of expression. This free speech framework for trademark law encourages legislatures, courts, and trademark offices to consider three questions when creating, revising, or interpreting a trademark law that implicates the free expression right. First, it is essential to identify the purpose of that specific trademark law – not the general purposes of trademark law, trademark theories, or a trademark’s functions – and determine whether that purpose is sufficiently important to justify this regulation of expression. Second, the decision-maker should evaluate whether that particular trademark law directly and materially furthers its purpose. Third, it should determine whether this trademark law endangers free speech, and ensure that it suppresses or chills protected expression no more than necessary in pursuit of that important purpose. For example, in the United States, (1) preventing fraudulent, deceptive, and misleading uses of marks is an important purpose of trademark law; (2) the trademark infringement statutes directly and materially further this purpose; and (3) these laws do not suppress or chill protected expression more than necessary if courts apply them in a viewpoint-neutral and narrowly tailored manner to unauthorized uses of another’s mark in fraudulent, deceptive, or misleading speech. US trademark dilution laws that ban unauthorized uses of famous marks that cause no confusion or actual harm, however, are inconsistent with the free expression right under this framework, as I have discussed in previous scholarship and will discuss later in Chapter 5.Footnote ³⁹

This free speech framework for trademark law is similar to constitutional balancing tests used in the United States, Europe, and other countries to determine whether government regulations of speech and other communications conflict with the right to freedom of expression. I discuss these laws in Chapter 2. The framework is also consistent with a purposive approach to interpretation of legal provisions in statutes, constitutions, and treaties, which requires the decision-maker to interpret the text of a broadly worded or ambiguous law in light of its purpose.Footnote ⁴⁰ Notably, this three-step framework does not just focus on the empirical or evidence-based question of whether a certain trademark doctrine furthers its goals (the second step). It also requires consideration of the normative or value-based questions of what purpose(s) of a certain trademark law are sufficiently important (the first step) and whether that law harms protected expression too much in its attempt to achieve that purpose (the third step). To be clear, I do not advocate that courts routinely engage in constitutional analysis of trademark law. Instead, I primarily call on legislatures to revise trademark statutes in ways that ensure the laws further important trademark goals without harming expressive values, and for trademark offices and courts to interpret these laws in speech-protective and pro-competitive ways when they decide whether a mark satisfies the requirements for trademark registration and protection, or is infringed or diluted by another’s unauthorized use of the mark.

I believe various reforms of trademark law are possible given the recent recognition by legislatures, courts, trademark offices, attorneys, academics, and other commentators that trademark laws must not conflict with the right to freedom of expression protected by constitutions, treaties, and statutes. For example, Recital 21 in the European Union’s (EU) Trade Mark Regulation explicitly states that the right to freedom of expression must be considered when courts interpret and apply trademark laws that regulate use in the course of trade of words, personal names, designs, and other signs as marks.Footnote ⁴¹ This Recital was cited with approval (along with laws and cases discussing the free expression right) by the Court of Justice of the European Union in Constantin Film,Footnote ⁴² and the Grand Board of Appeal of the EU Intellectual Property Office when it affirmed the decision to refuse to register the proposed mark “Covidiot” for various products on the ground it was contrary to morality and public policy.Footnote ⁴³ (The Grand Board of Appeal is the highest decision-making body of the EU Intellectual Property Office.)

In the United States, the US Supreme Court held in Tam and Brunetti that government regulations of commercial and noncommercial uses of trademarks can violate the free speech right in the First Amendment of the US Constitution when the trademark law discriminates based on the viewpoint of the message, and determined that provisions banning registration of matter that is disparaging, immoral, or scandalous are invalid speech regulations.Footnote ⁴⁴ Moreover, national courts in Europe and South Africa have discussed the free expression right in opinions allowing certain fair uses of another’s mark and have interpreted trademark enforcement statutes in ways that avoid clashes with this fundamental right.Footnote ⁴⁵ In addition, the world’s largest trademark organization – the International Trademark Association – has prepared model trademark law guidelines that include speech-protective and pro-competitive provisions, and has acknowledged in those guidelines that trademark laws must be consistent with the right to freedom of expression.Footnote ⁴⁶

Trademark registration laws. The application of my free speech framework to trademark law makes clear that governments should reconsider allowing the trademark registration of words, names, symbols, colors, shapes, creative works, and other features with substantial inherent value. Granting these types of trademark registrations does not directly and materially promote fair competition or other important goals of trademark law, and can stifle nonmisleading expression. If a proposed mark intrinsically conveyed product information, expressed ideas, or decorated products in an attention-grabbing way before it was first claimed as a mark, trademark law should typically not remove that subject matter from the public domain of expression available for everyone to use in connection with their goods or services. It is anti-competitive and speech-harmful to grant exclusive trademark rights (and especially broad trademark rights) in such marks when they have substantial informational, expressive, or decorative value not attributable to the reputation of the party claiming trademark rights. While a large company or celebrity with significant financial resources and followers on social media can often teach the public to associate a certain intrinsically valuable phrase, symbol, color, or other sign with them, such an association does not mean that subject matter functions as a trademark that identifies a single source of goods or services. Yet even if such a sign becomes product-source-identifying for some consumers due to its extensive use in the marketplace, governments should still consider not registering such marks to keep these signs free for use by everyone in an industry.Footnote ⁴⁷

Legislatures can better protect expressive values and fair competition in trademark law by ensuring their trademark statutes give trademark offices and courts the legal tools to prevent the registration and protection of trademark rights in language and other signs that should remain available for use by every company, organization, and person in the marketplace or community. As discussed in Chapters 1 and 4, some trademark registration laws currently have speech-protective and pro-competitive rules that can be invoked to prevent the registration of expression with substantial inherent value. I encourage trademark offices and courts to consider whether these types of marks are generic or the common name for this product, a merely descriptive mark lacking acquired distinctiveness, a nondistinctive slogan or trade dress, or a mark that is not distinctive for other reasons. The proposed mark could also be classified as matter that is functional, or as merely informational, expressive, or ornamental matter not used or perceived as a source-identifying mark, in jurisdictions prohibiting registration of that type of subject matter. Countries that currently do not have such provisions in their trademark laws should consider whether to adopt them. Legislatures can also protect free speech and legitimate competition by prohibiting the trademark registration of certain categories of expression regardless of whether that proposed mark has acquired distinctiveness through use, such as words and symbols that provide product information, single colors, and product shapes. This categorical approach is not without precedent. Some trademark laws ban the registration of generic signs, the name or image of a recognizable person without consent, and signs contrary to morality or public policy (such as hate speech) even when consumers associate that language or design with the trademark applicant.

While trademark offices typically do not register nondistinctive or functional subject matter, or signs that merely convey product information, express messages, or decorate products, sometimes government agencies make mistakes. This fact is not surprising – we all make mistakes – but certain rules in trademark statutes today can lead to these mistakes significantly harming free expression and fair competition. For example, in the United States, an erroneously registered descriptive phrase, color, or shape that has been on the principal trademark register for more than five years cannot be cancelled on the ground the mark lacks distinctiveness, or is merely informational or ornamental matter that fails to function as a source-identifying mark.Footnote ⁴⁸ This is true even if the challenger’s evidence establishes that consumers have never believed the registered mark is distinctive or identifies the product’s source, or if the competitor entered the market more than five years after the trademark’s registration. This type of speech-harmful and anti-competitive trademark cancellation rule should be changed in the United States and in other countries with a similar rule in their registration statutes.Footnote ⁴⁹

Trademark enforcement laws. Another problem with trademark laws today is the difficulty in predicting the outcome of court litigation given the vague likelihood of confusion standard in trademark law for determining whether a certain use of another’s mark infringes that mark. Unauthorized uses of identical or similar marks that are likely to cause confusion about the product’s origin or source (i.e., confusion about who produced the good or provided the service) are actionable, and so are uses only likely to cause confusion about the parties’ business relationship or whether the trademark owner approved of this use of its mark. Commentators also complain about the broad scope of trademark dilution laws that ban unauthorized uses of marks with identical, similar, or dissimilar goods or services that are allegedly likely to harm the distinctiveness or reputation of a mark that is famous or well known in that jurisdiction, or uses that take unfair advantage of a mark with a reputation. These laws allow the trademark owner to obtain strong trademark rights across industries - and suppress the use of language and other signs - in situations where the other party’s expression causes no actual or likely confusion, the parties are not competitors, and there is no evidence this use of the mark caused actual harm to the trademark owner or the public.

There are defensive doctrines in trademark enforcement laws that allow courts to protect expressive values and fair competition in various ways in trademark disputes. The problem is that these rules sometimes fail to achieve the proper balance between trademark and free speech rights, and some of these defenses are not available in every jurisdiction. A commercial use or trademark use of the mark requirement for trademark liability is an example. Many trademark statutes allow descriptive fair uses of another’s mark, but only some statutes exempt from trademark liability unauthorized uses of the mark in comparative advertising, news reporting, or parody, or aesthetically functional uses. I discuss and critique the various requirements for liability, fair use tests, and affirmative defenses in current trademark laws in Chapters 1 and 5. In Chapter 7, I suggest potential reforms of trademark enforcement laws for consideration by governments that want to better protect expressive values and fair competition in trademark law while still furthering trademark law’s important goals. For example, governments could categorically allow an accused infringer’s noncommercial use of another’s mark other than as a designation of source for its own products or message.

While I encourage countries to enact more speech-protective and pro-competitive requirements for liability and defenses, it is important to recognize that these trademark laws may be irrelevant if an accused infringer settles with the trademark owner because it cannot afford to litigate or if the trademark dispute is resolved privately, such as by an online marketplace. Owners of trademark rights in marks with substantial inherent value are free riding on the non-reputational value of these words, names, symbols, and features when they use the marks with their goods or services. A trademark registration gives them the ability to suppress and chill nonmisleading uses of the mark by others in ways that do not further trademark law’s important purposes. This is why it is better to not register expression with substantial inherent value, as courts will not always be in a position to protect speech interests and fair competition in trademark law. Trademark owners may argue that accused infringers can always use a different phrase, name, symbol, or feature in connection with their goods or services, but under free speech law everyone has the right to select the content of their expression unless the government has a sufficient justification for suppressing it.Footnote ⁵⁰

The following chapters encourage legislatures, trademark offices, courts, and private platforms that resolve trademark disputes to pay more attention to how trademark laws may conflict with the right to freedom of expression. Most of my examples in this book come from United States law since this is my main area of expertise, but I will also discuss laws from other nations and regions, including Australia, New Zealand, Singapore, the United Kingdom, and the European Union.Footnote ⁵¹ Chapter 1 provides a broad overview of trademark registration and enforcement laws using three detailed examples of expression with substantial pre-existing communicative value. Chapter 2 explains why trademark laws implicate the right to freedom of expression and discusses how courts in some jurisdictions currently determine whether a particular trademark law is consistent with this right. Chapter 3 contains details about my proposed free speech framework for evaluating conflicts between trademark laws and the free expression right. In Chapters 4 and 5, I apply this framework to trademark registration and enforcement laws, and explain how these laws currently chill and suppress nonmisleading expression in a manner that does not promote fair competition and trademark law’s other important goals. I discuss the continuum of inherently valuable expression in Chapter 6 and provide examples of marks with substantial, some, minimal, and no inherent value. In Chapter 7, I propose several reforms of trademark registration and enforcement laws for consideration by governments interested in better protecting expressive values and competition in trademark law. Chapter 8 concludes.

All trademark owners will benefit from changes to trademark law that increase predictability and clarity in trademark disputes, and reduce the cost of trademark registration and litigation. The public benefits if every company, organization, and person can use words, names, symbols, product features, and other signs in a nonmisleading informational, expressive, or decorative manner when they advertise and sell their products, or provide noncommercial goods or services. The pages that follow provide guidance for governments that want to reduce conflicts between their trademark laws and the right to freedom of expression.