Recommended Reading: Peter Karol, "The Constitutional Limitation on Trademark Propertization"

Associate Professor Peter J. Karol of New England Law School argues that the Constitution places critical limits on the power of Congress to regulate trademark signifiers that are unattached to goods or services. Karol, The Constitutional Limitation on Trademark Propertization, 17 Penn. Journal of Constitutional Law 1065 (2015). "Trademark propertization ... requires a separate and distinct Commerce Clause analysis from that used to justify regulation of trademarks affixed to
goods and services." Although this constitutional limitation on propertization is "distant and unreachable in most cases," it nonetheless serves as a brake on such controversial trademark doctrines as dilution and the rule against assignments in gross, and it prevents Congress from ever granting trademark rights upon the mere creation of a new trademark.

The following article seeks to apply the retrenchment in constitutional Commerce Clause jurisprudence of the last few decades to the phenomenon of trademark propertization, the expansive and largely federal movement towards protecting trademarks as assets apart from any connection to referent goods and services. Trademark scholars have filled the trademarks literature with critiques of propertization that generally object, on policy and historical grounds, to the trend and offer constructions of the Lanham Act designed to check its progress. With the notable exception of an article published in 2000 by Professor Kenneth Port, however, the literature has largely avoided addressing the question of whether the United States Congress possesses the authority to push trademark law so far in that direction.

Building off of Barton Beebe’s semiotic account of trademark law, the article observes that much of the Commerce Clause case law in the trademark space is muddied by the failure to draw an analytic distinction between the trademark as such (i.e., the trademark’s signifier) and the goods and services with which it is used. Moreover, many of the seminal cases in the area predate such important new contributions to Commerce Clause juris prudence as United States v. Lopez, Gonzalez v. Raich, and National Federation of Independent Business v. Sibelius.

Upon close review of these and other recent precedents, and a thorough application of contemporary, three-category Commerce Clause analysis to trademark propertization, the article concludes that there is a firm constitutional limit to Congresses’ ability to regulate trademark signifiers detached from goods and services. Namely, Congress may not recognize or protect a property interest in trademarks as such except as a rational means of furthering the regulation of referent goods or services. Although distant and unreachable in most cases, this constitutional ceiling serves as a critical constructional limit on certain controversial trademark doctrines like dilution and the rule against assignments in gross, and prevents the U.S. Congress from ever recognizing pure trademarks in the abstract as property upon creation. Although a complete defense of trademark “localism” is outside of the article’s scope, it ends by offering some basic policy and structural justifications for accepting this limit on federal authority in the trademark sphere.

Read comments and post your comment here

Text Copyright John L. Welch 2015.