trademark first amendment

Trademark Use Enjoys Broad First Amendment Protection

A recent Second Circuit decision, Wandering Dago, Inc. v. Destito (2018) confirms that trademark owners enjoy broad First Amendment rights in their trademarks, and that government actors may not discriminate against them based on the message and viewpoint conveyed by the mark. 

This is a further extension of the Supreme Court’s decision last year in Matal v. Tam (2017), which held that the Lanham Act’s bar on registration of disparaging marks in unconstitutional.

Wandering Dago is an incorporated business operating a food truck in and near Albany, New York.  Its owners purposely chose as part of its brand what many regard as an ethnic slur, as they themselves are of Italian heritage and wish to weaken the derogatory force of the term, as well as convey a blue-collar image. 

The Defendants are the New York state authority (and its director) charged with administering certain spaces in and near state buildings in Albany and elsewhere.  Among other things, the defendants let certain space near state office buildings to various food vendors so that they can supply lunch to officer workers and tourists.  Defendants denied Wandering Dago’s application for a permit because of the ethnic slur nature of its brand.

But the Second Circuit held that under Matal, such a denial constitutes viewpoint discrimination and is barred by the First Amendment.  It also rejected the argument that the permission to provide food truck services would render Wandering Dago’s mark as “government speech,” subject to a more lenient standard. 

Wandering Dago affirms that corporate messages are entitled to strong First Amendment protection.While most companies do not choose trademarks that are offensive, many companies do adopt slogans and other promotional messages that are sometimes controversial.The Wandering Dago decision affirms that such commercial messages are still protected by the First Amendment and thus the government cannot discriminate against use of such messages

Look Before You Leap: Trademark Decision Highlights Importance of Thorough Pre-Litigation Assessment of Case

A recent Ninth Circuit decision, Virag, S.R.L. v. Sony Computer Entertainment America LLC, highlights that companies considering litigation need to ask two hard questions:

  • What are our chances of success, and what are the other side’s best defenses?
  • What is the business purpose of bringing suit?

All indications are that this was a case that should never have been brought. The case involved display of a trademark (for commercial flooring products) in a race-car video game by Sony. The court affirmed summary dismissal based on a long-standing First Amendment limitation on trademark suits. Apart from that, the claims appear both very weak under basic trademark law and to have little business purpose. Meanwhile, the plaintiff spent significant legal fees and now faces defending a big fee application from the defendants.

The takeaway: don’t be led down the primrose path. Ask the hard questions before bringing suit. And make sure you are getting frank advice from your counsel.