In determining whether trademark infringement occurs under the Lanham Act, courts look to see whether the alleged infringer’s use will cause a likelihood of confusion. If a court finds a likelihood of confusion, the alleged infringer can assert a fair use affirmative defense. The fair use defense was adopted to protect expressive use of a trademark, which is protected by the First Amendment. Traditionally, one could be held liable for trademark infringement even if the infringer was not selling goods or services. A nonprofit organization that co-opted a valid trademark could be held liable for infringement under the Lanham Act. For instance, a noncommercial political entity trading in ideas could not brand itself the “Democratic Party” simply because it was not selling goods or services.
That has changed. In the early twenty-first century, several circuits have held that trademark infringement claims require a commercial use. That is, the alleged infringer must have used the trademark in connection with goods or commercial services. These courts reason that the Lanham Act is only constitutional because it regulates commercial speech—a form of speech that gets less First Amendment protection than other forms of speech. Under this interpretation of the Lanham Act, noncommercial uses of a trademark—no matter how confusing—do not amount to infringement. This is because a noncommercial use “refers to a use that consists entirely of noncommercial, or fully constitutionally protected, speech.”
This Comment argues that the narrow focus of these courts on commercial uses of a trademark is misguided. In taking such a view of trademark use sufficient to trigger liability, these courts allow uses that harm the consumers and producers of goods and services. The better approach is to allow noncommercial use to constitute infringement, while simultaneously protecting First Amendment concerns through a modified likelihood of confusion analysis.