Confusing Use of Another Political Group’s Name as “Source Identifier” May Lead to Trademark Injunction
From Wednesday’s decision in Libertarian National Committee, Inc. v. Saliba, by Sixth Circuit Judge Julia Smith Gibbons, joined by Judges Guy Cole and Chad Readler:
This trademark action arises out of a dispute within the Libertarian Party of Michigan (referred to by name or as the “Michigan affiliate”). The Libertarian National Committee, Inc. (“LNC”) sued dissenting members of the Michigan affiliate—mainly former officers of the affiliate or board members of local parties—for using the LNC’s trademark to hold themselves out as the official Michigan affiliate after a turnover of power resulted in two factions claiming to hold power.
The district court granted the LNC’s request to preliminarily enjoin the dissenting members’ use of the mark, and the dissenting members appealed. They argue that the district court’s application of the Lanham Act to the context of noncommercial speech both unduly expands the Act and violates the First Amendment. Even if the Lanham Act covers the dissenting members’ use of the trademark, they argue that their use was authorized and not likely to cause confusion [details on this omitted -EV].
The circuit court largely agreed with the district court, concluding that trademark law may permissibly restrict confusing uses of another entity’s name as “designat[ing the] source” of speech, goods, and services, even in political speech rather than commercial advertising:
In Taubman Co. v. Webfeats (6th Cir. 2003), this Circuit addressed the use of a shopping mall’s trademark in domain names by the creator of a “fan site” and, after the relationship between the parties soured, a gripe site for that mall. The website creator contended that his purpose for using the mall’s trademark in his websites was expressive rather than commercial, and thus outside of the realm of the Lanham Act and protected by the First Amendment. In combatting the defendant’s allegation that the Lanham Act conflicted with the First Amendment, the Taubman Court reasoned that the Lanham Act is constitutionally sound “because it only regulates commercial speech, which is entitled to reduced protections under the First Amendment.” …
In explaining why the defendant’s use of the mall’s mark was protected expression, the Taubman Court expounded that the defendant used the mark to comment on the trademark holder—not “to designate source.” Jack Daniel’s Properties, Inc. v. VIP Prods. LLC (2023). In other words, the defendant did not use the mark to pass off the goods or services advertised on his website as those of the shopping mall.
Since Taubman, the Supreme Court has explained how the Lanham Act and the First Amendment interact when a defendant uses a trademark to misrepresent his or her goods or services as those of or associated with the trademark owner. Just last year, the Court noted that where a defendant uses a trademark as a source identifier, “[t]he trademark law generally prevails over the First Amendment.” Jack Daniel’s Properties. This is because use of a trademark as a source identifier undermines the primary function of trademark law, which is to prevent “misinformation[ ] about who is responsible for a product” or service. Such is true even
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