United States v. Steffens
The Court struck down the federal criminal trademark laws, ruling that Congress had no constitutional basis for them. The laws could not be justified under the clause letting Congress protect authors' and inventors' writings and discoveries, because trademarks require no originality or invention.
The Court also declined to say whether the Commerce Clause could support a narrower trademark law limited to interstate or foreign trade, because the laws at issue applied broadly to all trademark use regardless of whether interstate commerce was involved, and courts cannot rewrite a criminal statute to save it.
How it got here: Circuit court judges in New York and Ohio disagreed on whether the federal trademark laws were constitutional and certified that question to the Supreme Court.
The Case in Depth
What happened
Three criminal cases—two indictments from New York and an information from Ohio—charged defendants with fraudulently using or counterfeiting trademarks that had been registered under the federal Trade-Mark Act of 1870, punishable under an 1876 criminal statute. The circuit court judges in each case disagreed about whether Congress had any constitutional authority to pass these trademark laws in the first place.
The question before the Court
Did Congress have the constitutional power to pass criminal laws punishing the misuse of federally registered trademarks?
Why it matters
Businesses lost the ability to rely on federal registration and federal criminal penalties to protect their trademarks, leaving trademark protection to state common law and state courts. The decision pushed Congress to eventually rewrite federal trademark law around interstate and foreign commerce, reshaping how national brand protection developed in the United States.
What changes now
The Court certified negative answers to the circuit courts, meaning the federal trademark registration statute and its companion criminal-penalty statute could not be enforced as written. Because the 1876 criminal law depended entirely on registrations made under the invalidated 1870 Act, both fell together. The ruling left the door open for Congress to write a new trademark law expressly limited to interstate or foreign commerce, and for trademark owners to rely on state law protections in the meantime.
What this does not decide
The Court explicitly left undecided whether Congress could validly regulate trademarks used specifically in commerce with foreign nations or among the states, and it did not address Congress's treaty-making power over trademarks or its duty to pass laws implementing treaties.
How the Court got there
The legal reasoning, step by step
- The Court first asked whether the Patent and Copyright Clause, which lets Congress secure exclusive rights for authors' and inventors' 'writings and discoveries,' could support trademark law, since the 1870 Act was framed as part of patent and copyright legislation.
- The Court found trademarks fundamentally different from patents and copyrights: patents require novelty and invention, copyrights require original creative authorship, but a trademark can be an old, common symbol simply claimed first through use or registration, with no creative or inventive element required.
- Because trademarks require no originality, invention, or intellectual labor, the Court concluded the Patent and Copyright Clause could not authorize this kind of legislation, no matter how useful such laws might be.
- Turning to the Commerce Clause, the Court noted Congress can only regulate commerce with foreign nations, among the states, and with Indian tribes—not commerce entirely within a single state—and reasoned that a law can only rest on this power if it is actually limited to that kind of commerce on its face or in its essential operation.
- Examining the actual text of the trademark statutes, the Court found no limitation to interstate or foreign commerce anywhere: any person or firm in the United States could register a mark and receive full protection regardless of whether their trade crossed state or national lines.
- Because the statute was written as a universal registration system rather than one confined to interstate or foreign commerce, and because courts cannot rewrite a criminal law to narrow it to a constitutional subset of conduct, the Court held it could not save the law by limiting it judicially to cases actually involving interstate or foreign commerce.
Doctrinal impact
Cases affected by this decision
Reaffirms United States v. Reese (92 U. S. 214)
Relied on to hold courts cannot narrow an overbroad criminal statute by judicial construction to save it.
Distinguishes Paul v. Virginia (8 Wall. 168)
Cited to show an insurance policy was not an article of commerce, unlike goods actually sold in trade.