Legal Commentary

Citizens United to stop the Citizens [who are] United Against Citizens United

By David Post

So here?s a cute little trademark dispute. Those stalwart defenders of free speech, Citizens United, apparently are not so crazy about being on the receiving end of the First Amendment?s free speech guarantee. The group, which as you know won a huge victory last month in the Supreme Court in its First Amendment challenge against the FEC?s interpretation of the federal election rules, has now apparently threatened, on grounds of trademark infringement, a Wisconsin group who have issued an online petition (and facebook group) named ?Citizens United against Citizens United? as a protest against the Court?s decision.

It?s unseemly, at best. And probably a loser, too. ?Citizens United? is a term that will only get trademark protection if they can show that it has developed ?secondary meaning? in the minds of the consuming public ? that is, if members of the public recognize that it is being used as a ?brand? to identify the source of goods and services, as opposed to being used in its ?descriptive? sense (to simply indicate that there are citizens who are united against something). A quick Google search reveals, as one would expect, dozens and dozens of ?citizens united? groups: Citizens United for Alternatives to the Death Penalty, Citizens United for Research in Epilepsy, Citizens United for Rehabilitation of Errants, Citizens United Resisting Euthanasia, . . . There is a ?fair use? defense in trademark law that protects just these kinds of uses, where descriptive terms are being used in their descriptive sense; the right to sue for infringement of a registered mark is subject to the defense that . . .

?. . . the use of the name, term, or device charged to be an infringement is a use . . . of a term . . . which is descriptive of and used fairly and in good faith only to describe the goods or services of such party . . .?

Otherwise, one party could monopolize a very useful little portion of the English language for its own private use.

Full post as published by The Volokh Conspiracy on March 16, 2010 (boomark / email).