First Amendment Protections and the Lanham Act
Both the First Amendment of the Constitution and the Lanham Act provide a high level of protection against trademark infringement and trademark dilution claims. The Lanham Act is the federal trademark statute of law in the United States which prohibits certain activities including trademark infringement, trademark dilution, and false advertising. Under both the First Amendment and the Lanham Act, it may be permissible to use or reference another’s trademark if it is being used for non commercial purposes. Commercial speech is defined as any type of communication that “proposes or offers explicitly or implicitly a sale or exchange transaction in a specified commodity or service, and is made by the proposer as part of its business of profiting from such transactions, and does no more than describe the terms of such proposal or simply identify the putative seller’s products.
Under the First Amendment, the regulation of non commercial speech is subject to strict government scrutiny. This strict standard of review makes it difficult to uphold any regulation that may be restricting the use of such speech. While there are strong protections for non commercial speech, determining whether speech is commercial or non commercial can be the most difficult challenge in raising a first amendment defense.
Commercial v. Non-Commercial Speech
Often, non-commercial speech intermingles with commercial speech making it difficult to determine whether the speech is protected. Considering there is no precise definition of non-commercial speech, the decisions by the courts stand as guidelines in deciding whether speech is commercial or non-commercial. The courts have evaluated some common scenarios in which it may be difficult to identify the kind of speech used. The courts have looked into advertisements and social media platforms to draw boundaries as to what is commercial and non commercial.
An advertisement’s ability to promote a product or enhance the goodwill of a company is usually considered to be commercial speech. An issue arises when the advertisement merely mentions another trademark, yet does not promote it for profit or reputation. On its face, this would appear to be a form of non-commercial speech. However, the courts have ruled that “[a]n advertisement is no less commercial because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service.” 
Whether or not the advertisement is intended to promote profit doesn’t matter if the associated trademark is in someway benefiting your company. Individuals may assume your product is related with that of the mentioned trademark eliminating the ability to raise a non-commercial speech defense.
Social Media Platforms
A social media platform usually rises to the level of commercial speech when its use of another trademark is intended to build support for its own product. Courts have not directly dealt with the commerciality of content posted on social media platforms, so it has been evaluated in a similar manner as other commercial content promoting sources. There are certain instances where the use of another’s trademark on social media is permissible. Permissible use includes; descriptive fair use and nominative fair use.
Descriptive Fair Use
Descriptive fair use involves the use of another’s mark, not as a trademark but solely as a description. This occurs when the mark being used actually describes a person, place or attribute of goods or services. For example, in Sorensen v. WD-40 Co., a chemical company’s use of the term “inhibitor” was considered a fair descriptive use, as they used it to describe an inhibitor product despite the fact the petitioner’s company was named “THE INHBITOR.”  Courts have also expanded descriptive fair use to include not just purely literal terms, but also some figurative expressions. For example, identifying your soda product as “the most amazing soda” when “Amazing Soda” is a protected trademark. This protects businesses as it does not restrict them from using generic terms that may have been trademark registered. To ensure your use of such terms falls within the descriptive fair use category, only use it when needed. In addition, descriptive fair use is eliminated when you use the particular and unique stylization of a term trademarked by another company. Nonetheless, such a uniquely stylized word may still be used if it constitutes nominative fair use.
Nominative Fair Use
Nominative fair use is a permissible use of another’s trademark when it is used as a reference to describe the other product, or if it issued used to compare it to their own product. In most instances this applies when a company is comparing their product to that of another. The courts have allowed this when the trademark is “the only word reasonably available to describe a particular thing” or so long as it is being used for comparative purposes, that it does not disparage the competitor, or make claims that are inaccurate or hurtful to the reputation of this other company.
A ninth circuit case, New Kids, sets forth a three factor test in determining the acceptable use of nominative fair use. This test requires that, the plaintiff’s product or service not readily be identified without the use of the trademark, the defendant has used only so much of the mark as necessary to identify the product, and the defendant has not done anything that would suggest the plaintiff has sponsored or endorsed the defendant. So long as these three requirements are satisfied, nominative fair use applies and a non-commercial speech defense may be raised.
A seller may raise a first amendment defense to a trademark infringement or trademark dilution claim so long as its use of such trademark can be classified as non commercial speech. It is important to avoid the use of such trademarks in advertising as it becomes difficult to distinguish between commercial and non commercial use, however it is permissible in some cases. Lastly, the use of other trademarks on a social media platform is permissible only if it is for a descriptive fair use, or nominative fair use.
 See, e.g., Friedman v. Rogers, 440 U.S. 1, 11 n.10
 See Jordan v. Jewel Food Stores, Inc.
 See Sorensen v. WD-40 Co.,
By: Travis Stockman, Paralegal, Rosenbaum Famularo, P.C.
Travis is a third year law student at Hofstra University School of Law and a paralegal at Rosenbaum Famularo, P.C., AmazonSellersLawyer.com.