On June 5, 2023, the United States Supreme Court granted the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari to determine whether Trademark Act Section 2(c), 15 U.S.C. §1052(c), which bars registration of a mark that “[c]onsists of or comprises a name… identifying a particular living individual except by his written consent[,]” violates the First Amendment of the United States Constitution when the mark in question criticizes public figures, including government officials.

The Court of Appeals for the Federal Circuit (“CAFC”) called into question the constitutionality of Trademark Act Section 2(c) when it reversed the USPTO’s Trademark Trial and Appeal Board’s (“TTAB”) decision affirming the refusal to register the mark TRUMP TOO SMALL. Finding that the USPTO lacked a substantial government interest in restricting petitioner Steve Elster’s “trademarked speech,” the CAFC held Section 2(c) unconstitutional as applied to the facts of this case.

Seeking to call to mind a peculiar spat between then-candidate Donald J. Trump and Florida Senator Marco A. Rubio during a March 2016 Republican Party presidential debate, Elster applied to register the mark TRUMP TOO SMALL for use in connection with a variety of shirts. The USPTO examining attorney refused registration of the mark under Trademark Act Sections 2(c) and 2(a). As noted above, Trademark Act Section 2(c) prohibits registration of marks “[c]onsist[ing] of or compris[ing] a name, portrait, or signature identifying a particular living individual except by his written consent,” while Section 2(a), 15 U.S.C. §1052(a) forbids, in part, registration of marks that “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols[.]”

After the refusals were made final, Elster appealed to the TTAB, arguing Sections 2(a) and 2(c) unconstitutionally restricted his content-based speech. The TTAB affirmed the Section 2(c) refusal, holding that Section 2(c) was not an unconstitutional restriction on speech. The TTAB further found that, to the extent Section 2(c) did restrict speech, the provision was narrowly tailored to advance the government’s interest in protecting privacy and publicity rights, as well as protecting consumers from being deceived as to source. Having affirmed the Section 2(c) refusal, the TTAB did not reach a decision on the merits of the Section 2(a) refusal.

Elster appealed to the CAFC, challenging the constitutionality of Section 2(c). The USPTO did not raise the Section 2(a) refusal as an alternative basis for affirming the TTAB’s decision.

The CAFC first discussed the Supreme Court’s decisions regarding the unconstitutionality of Trademark Act Section 2(a)’s disparagement, Matal v. Tam, 582 U.S. 218, 137 S. Ct. 1744, 198 L. Ed. 2d 366, 137 S. Ct. 1744 (2017), and immoral/scandalous clauses, Iancu v. Brunetti, 204 L. Ed. 2d 714, 139 S. Ct. 2294 (2019). Those cases established that a trademark is not only private speech, but due to the protections afforded registered trademarks, the USPTO’s refusal to register could improperly disfavor certain speech based on its content without a showing of a compelling government interest, a violation of the First Amendment. Those decisions, however, concerned viewpoint-based restrictions and were thus of limited applicability to the issue of the constitutionality of Section 2(c)’s content-based speech restrictions.

In analyzing the constitutionality of Section 2(c), the CAFC held that irrespective of whether the standard of review is strict scrutiny or intermediate scrutiny, the government must demonstrate at least a substantial interest in restricting the “trademarked speech.”

The USPTO first argued that protecting privacy rights outweighed Elster’s First Amendment interests. The CAFC was unpersuaded. Public figures, such as government officials, are subject to greater scrutiny due to their engagement in public life. Absent evidence of actual malice, a claim not at issue in this case, the CAFC held that President Trump’s privacy concerns did not outweigh Elster’s right to criticize him through his chosen mark.

The USPTO next asserted it has an interest in defending publicity rights - namely, to safeguard against misappropriation of a person’s name for commercial gain and to prevent registration of a mark that falsely suggests an endorsement or association. The CAFC was similarly unmoved.

Specifically, the CAFC noted the USPTO did not allege that Elster misappropriated President Trump’s name for pecuniary gain or otherwise weakened its commercial value. It also found implausible the potential claim that Elster’s mark falsely suggested his shirts were endorsed by President Trump. Further undermining this argument was the fact that Trademark Act Section 2(a) is designed to accomplish a similar goal by barring registration of marks that falsely suggest a connection with persons, living or dead. Most importantly, the CAFC emphasized that when a public figure is involved, the right of publicity must give way to political criticism protected by the First Amendment.

In reversing the TTAB’s decision, the CAFC also expressed concern regarding Section 2(c)’s overbreadth, noting that the provision does not provide the USPTO with discretion to register marks that implicate matters of public concern. Absent such discretion, Section 2(c)’s application would likely lead to repeated unconstitutional restrictions of speech in violation of the First Amendment. Elster, however, raised only an as-applied challenge to the particular facts of his case, rather than facially challenge the constitutionality of Section 2(c); therefore, the CAFC abstained from analyzing the potential overbreadth of Section 2(c).

Now the Supreme Court will again weigh in on the tension between the Trademark Act and First Amendment in a decision likely to issue in mid-2024. In the meantime, we may see some trademark filings using the names of the Justices themselves. However, no such applications are likely to be examined before the Supreme Court’s decision. Per USPTO Examination Guide 1-23, “the USPTO [is] suspending action on pending applications involving marks subject to refusal under section 2(c) that are critical of government officials or public figures” pending the Supreme Court’s decision in Vidal v. Elster.

The case is In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022), cert. granted, (Vidal v. Elster, U.S. June 5, 2023) (No. 91-142).