trademark law

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

Is Bait and Switch Advertising Actionable Under the Lanham Act?

A recent Eastern District of New York decision, Sussman-Automatic Corp. v. Spa World Corp., 15 F.Supp.3d 258,  (E.D.N.Y. 2014), holds that use of a trademark in “bait and switch” advertising does not constitute trademark infringement (although it might constitute false advertising).  In dismissing the plaintiff’s trademark infringement complaint, the decision appears to have unduly narrowed the scope of Lanham Act actionable “confusion.”  

We analyze this case and discuss why its reasoning is flawed and inconsistent with the Second Circuit interpretation of the Lanham Act.