Valuing the Freedom of Speech and the Freedom to Compete in Defenses to Trademark and Related Claims in the United States

This book chapter appears in the CAMBRIDGE HANDBOOK ON INTERNATIONAL AND COMPARATIVE TRADEMARK LAW, edited by Jane C. Ginsburg & Irene Calboli (Cambridge Univ. Press 2020). The Chapter provides an overview of the defenses to trademark infringement, dilution, and false endorsement claims that serve the goals of free expression and fair competition. In particular, the Chapter covers the defenses of genericism, functionality, descriptive and nominative fair use, the Rogers test, statutory exemptions to dilution claims, and the questions of whether and how an independent First Amendment defense applies in light of recent Supreme Court decisions.In addition to providing a useful guide to each of these defenses in U.S. law, the Chapter makes several overarching observations about these speech and competition-related defenses. First, that the speech or competition values asserted by the defendants influence the likely success of the claims. Defenses are more successful when the uses are in creative or artistic works, convey relevant information to potential consumers (even in advertising), or are deemed a commercial necessity. Second, that the perceived “reasonableness” of the defendant’s use will determine the likely success of the asserted defense. This is true even when the particular defense does not explicitly include such a consideration. Finally, that these defenses serve as an important counterbalance to the broad scope of today’s trademark law, which has expanded dramatically over the last century, particularly in the last few decades with the addition of dilution claims to the federal regime.The defenses highlighted in this Chapter provide a powerful antidote to the potential for trademark and related laws to shut down speech and unduly limit competition. The First Amendment and its speech-protective penumbras incorporated into trademark law provide latitude to use others’ marks both in commercial and noncommercial speech, but this protection is not without limits. When a use exceeds what is appropriate under the circumstances, and is perceived as primarily profiting from another’s goodwill without a corresponding speech benefit, these defenses are unlikely to provide protective shade