Academic journal article American University Law Review

Moral Judgments in Trademark Law

Academic journal article American University Law Review

Moral Judgments in Trademark Law

Article excerpt


Trademark law exists to promote the commercial marketplace by regulating a certain type of speech. To that end, the Trademark Act of 1946 ("Lanham Act")1 employs several content-based criteria that bar trademark eligibility.2 Such criteria include inquiries into whether a mark is descriptive, generic, deceptive, or a government symbol; whether a mark resembles a living person or an existing mark; whether a mark is functional; and whether a mark is immoral, scandalous, or disparaging.3 Recently, the criteria that bar trademark protection for immoral, scandalous, and disparaging marks-which I refer to as the "morality bars"-has come under constitutional attack. In In re Tam,4 a majority of an en banc U.S. Court of Appeals for the Federal circuit held that the morality bars violate the First Amendment.5 Yet in the face of the other content-based bars in trademark law, coupled with the lengthy history of the morality bars, the majority's holding is puzzling.6 The context of trademark law seems to justify the seeming offense to free speech.7 For if the morality bars violate free speech, it would seem that the other content-based criteria do as well.8 On the basis of speech, it is difficult to distinguish the morality bars from other content-based bars in trademark law.9

This is not to say that the morality bars are indistinguishable from the other content-based criteria that determine trademark eligibility. To the contrary, the morality bars reflect the only criteria that require the government to consider issues of morality in determining trademark protection. This distinction, i believe, lies at the heart of the Tam holding. Indeed, the Tam majority expressed uneasiness with the government making "moral judgments" to determine trademark eligibility.10 Reading between the lines of Tam, as well as reading some particular lines of Tam, I infer that the majority disapproves of Congress legislating morality in a context that affects speech.11 This leads me to believe that Tam is as much about legislating morality as it is about free speech. Tam may be viewed from either a speech paradigm or a morality paradigm. In the end, however, neither paradigm justifies the majority's holding. I argue that the morality bars reflect good policy and are constitutional.

This Essay addresses the speech and morality paradigms of Tam in two parts. Part I addresses the speech paradigm. In that Part, I briefly summarize the argument against finding a speech violation.12 Part I provides the proper framework for discussing the morality paradigm in Part II. In Part II, I consider whether Congress can and should employ moral judgments to determine trademark eligibility. The Essay concludes that Tam was incorrectly decided: the morality bars are constitutional regulations of commercial speech and further the purpose of trademark law.


The Tam majority recited First Amendment jurisprudence that, outside the context of trademark law, might seem to condemn the morality bars.13 Context, however, is everything in speech law.14 Ignoring the context of the morality bars (i.e., marks designating commercial source) is akin to ignoring the context of a man shouting fire (i.e., in a building that is ablaze as opposed to a crowded theatre that is not).15 The context in which trademark arises demonstrates that the morality bars must be constitutional as a matter of free speech law. The intricacies of that context, and its implication on speech law, I address in a separate work.16 Here, I only summarize the general points of the context to aid my discussion in Part ii about the Tam morality paradigm.

When a person uses a trademark to represent herself as the source of a good or service, she is speaking. She is expressing the idea of her identity as the source.17 A bus company chooses GREYHOUND. A car company chooses MERCEDEZ. A restaurant company chooses CHICK-FIL-A. Each company communicates meaning through the mark. …

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