A Counterintuitive Approach to the Interaction Between Trademarks and Freedom of Expression in the US and Europe: A Two-Way Relationship

As trademarks have evolved to perform an expressive function, courts and scholars on both sides of the Atlantic have devoted increased attention to elucidating when, and how, marks and speech interact. Three forms of interaction can be identified in US and European case law. First, in infringement litigation, a defendant can invoke speech with a view toward insulating from liability his unauthorized use of plaintiff’s mark for expressive purposes, usually for parody or commentary. Second, in trademark registration, unsuccessful applicants can invoke speech to challenge the validity of a refusal of registration. And third, in constitutional challenges, a trademark owner can invoke speech in seeking to strike down public measures encroaching on trademark use. Regrettably, to date, commentators have had a tendency to focus on one form of interaction at a time, placing special emphasis on infringement cases. Their analyses and proposals for reform have privileged this form of interaction in an effort to avoid the severe repercussions that unbridled enforcement of trademark rights could have on defendants’ speech. This has led to an impoverished understanding of the interaction between marks and speech, broadly considered. In the absence of comprehensive studies covering the diversity of instances where both sets of rights interact, conventional wisdom posits that their interaction is unidirectional, in the sense that trademark rights chill expression. This Article seeks to redress this misconception by engaging in a taxonomic analysis of the diverse scenarios in which marks and speech interact. Their joint study reveals that this interaction is best understood as a two-way street, where freedom of expression can simultaneously limit and validate trademark rights. This Article posits that the proposed reconceptualization of the interaction between marks and speech can contribute significantly to the advancement of the field.