This Article examines the largely unexplored relationship between municipal zoning or signage ordinances, trademark law, and the U.S. Constitution. Section 1121(b) of the Lanham Act expressly prohibits any state or political subdivision from requiring the alteration of a federally registered mark. Yet, litigation has confirmed that local signage laws are being applied to compel mark owners to alter components of their federally registered marks displayed on exterior signs. Since many such ordinances exist throughout this country and affect numerous trademarks, it is imperative that a resolution of the legal issues presented by this controversy be formulated. This Article highlights the growing controvery between the application of 1121(b) and local signage laws and recommends several legal bases for a solution. It examines the nature of trademarkable properties and offers empirical evidence showing how municipalities actually regulate tramarkable properties through their signage laws. It then focuses on the concept of trademark display and argues that the display of a federally registered mark on an exterior sign should be considered an integral component of the mark. It also explores the legal framework courts have invoked to determine when local regulations are preempted by federal law, and argues that the application of signage laws to require alterations of federally registered marks on exterior signs should be preempted by 1121(b) with respect to the most conventional trademarkable properties, such as color and lettering style.In contrast, with respect to less mainstream trademarkable properties such as size, three-dimensional shape, illumination, and even sound, 1121(b) should be interpreted with more flexibility so that courts may balance the appropriate considerations on both sides. Finally, this Article examines arguments that support mark owners under the Commerce Clause and the serious First Amendment implications that arise when local authorities require alterations of federally registered marks on exterior signs.
Roberta Rosenthal Kwall, Regulating Trademarks on Exterior Signs: Should Local Law Trump the Lanham Act and the Constitution?, 71 S. Cal. L. Rev. 1105 (1998)