By Jake Linford, Justin Sevier & Allyson Willis.
Trademark law protects famous marks from dilution by tarnishment, defined by statute as use likely to “harm the reputation of the famous mark.” Tarnishing uses are typically those that connect a mark with disreputable goods or topics, like sex or drugs. Mark owners worry that consumers will not purchase products connected with sexually explicit or drug-related materials, and courts often presume the same. If those associations likely cause consumers to withhold custom or dissipate goodwill consumers have invested in the mark, anti-tarnishment protection might be justified. But if that harm is more mythic than real, the law penalizing tarnishing use of trademarks may be ripe for judicial skepticism or congressional reevaluation.
Indeed, constitutional invalidation might even be on the table. In a series of recent cases, the Supreme Court invalidated laws targeting false claims to military honors and the registration of disparaging, scandalous, or immoral trademarks on First Amendment grounds. In each case, the Court concluded the regulation was not narrowly targeted to an established harm. If harm via tarnishment happens rarely, or never, then laws penalizing tarnishing speech might violate the First Amendment. Full Article.