Perspective

The Trademark Registration Process and the First Amendment

Theodore H. Davis Jr.

©2016. Published in Landslide, Vol. 8, No. 5, May/June 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In United States v. Steffens (Trademark Cases),1 the United States Supreme Court invalidated as unconstitutional the first two pieces of federal trademark legislation, which Congress had enacted under the auspices of the Constitution’s patent and copyright clause;2 according to the Court, the commerce clause3 was the appropriate basis for the federal protection of trademarks and service marks.4 Congress eventually accepted the Court’s suggestion by enacting new legislation under the commerce clause, culminating in the 1946 passage of the Lanham Act. During the 136 years since the Trademark Cases, and although courts at times have declined to enforce commerce clause–based trademark legislation in particular situations presenting perceived First Amendment concerns,5 no subsequent judicial opinion held a particular section of the Lanham Act unconstitutional.

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