TRUMP TOO SMALL Amici Weigh in as High Court Readies for Another Trademark Fight

Amici have submitted briefs and a response has been filed in recent weeks with respect to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s petition to the U.S. Supreme Court for review of a decision that said the USPTO was wrong to reject a trademark application for the mark TRUMP TOO SMALL.

The February decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) held the Office’s application of Section 2(c) of the Lanham Act to reject TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

The High Court granted the USPTO’s petition in June and argument has now been set for November 1.

From the USPTO to SCOTUS

Vidal’s petition presents the question, “Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”

The trademark applicant, Steve Elster, attempted to register the trademark TRUMP TOO SMALL for use on T-shirts, but an examiner refused the application, saying that section 2(c) bars registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” While Elster argued the mark was “intended as political commentary,”—particularly, to “convey[] that some features of President Trump and his policies are diminutive”—the examiner said there is no statutory or “case law carve[] out” for “political commentary.” The examiner also rejected Elster’s argument that denying the application infringed his First Amendment rights, “finding that the registration bars are not restrictions on speech, and in the alternative, that any such restriction would be permissible.”

Separately, the examiner denied registration of the mark under section 2(a)’s false association clause, which bars registration of trademarks that “falsely suggest a connection with persons, living or dead” and further rejected a First Amendment defense in that case.

On appeal, the Trademark Trial and Appeal Board (TTAB) consolidated the two cases and affirmed the examiner’s decisions on the section 2(c) grounds alone. The Board explained that Section 2(c) has been found not to be an unconstitutional restriction on free speech because it is “narrowly tailored to advance two compelling government interests: protecting the named individual’s rights of privacy and publicity and protecting consumers against source deception.”

The CAFC reversed and the USPTO appealed, arguing that the court’s holding “is incorrect, and this Court usually grants review when a court of appeals has invalidated the application of a federal statute.”

Vidal pointed to Matal v. Tam and Iancu v. Brunetti as evidence of the Court’s interest in addressing such issues, adding: “And this case presents a recurring issue under the First Amendment that this Court’s decisions in Tam and Brunetti left open: ‘whether a Lanham Act bar’ on the registration of a trademark is ‘a condition on a government benefit or a simple restriction on speech.’”

Brief for FIRE

On September 12, the Foundation for Individual Rights and Expression (FIRE) filed an amicus brief in support of Elster urging the Supreme Court to hold U.S.C. § 1052(c) unconstitutional.

“By precluding the registration of trademarks that contain (among other things) a living person’s name—except by his written consent—Section 1052(c) [or Section 2 (c) of the Lanham Act] effectively favors speech that flatters or praises a named person while disfavoring speech that criticizes or parodies that person,” said the brief.

The brief further noted that “dozens of trademarks using the former President’s name favorably have been registered with his consent” and said this does exactly what the Court cautioned against in Brunetti: it “allows registration of marks when their messages accord with, but not when their messages defy” a particular point of view.

INTA Brief

But in early August, the International Trademark Association (INTA) filed a brief supporting the USPTO said that provision passes constitutional muster for four key reasons:

1) Section 2(c) does not create any significant or undue restriction on speech, because the owner does not need a registration to engage in speech;

2) Section 2(c) is viewpoint neutral and therefore distinguishable from the provisions struck down in the Supreme Court’s recent Tam and Brunetti cases;

3) Congress has a substantial interest in regulating registration of trademarks that appropriate and trade upon the names and associated publicity rights of recognized individuals; and

4) Section 2(c) refusals permit more speech, not less, because they deny the owner the presumptive right to exclude third parties from using the claimed mark.

INTA said the statute in question is viewpoint neutral because it is “agnostic to the message conveyed or the view expressed.” This is distinguishable from Tam, where the court held that the disparagement provision was viewpoint discriminatory because it involved “analyzing if a trademark would give offense.” And in Brunetti, the Court said “the immoral or scandalous bar to a trademark in Section 2(a) was viewpoint based because government disapproval of offensive messages is viewpoint discrimination.”

Since 2(c) is viewpoint neutral, the Court should at most apply “intermediate scrutiny” – as opposed to strict scrutiny – in evaluating the constitutionality of the provision.

The INTA brief added that the prohibition on registering marks naming individuals without their consent serves important policy goals, namely, a) to protect the rights of publicity and privacy and b) to promote consisting in trademark examination. “If the Federal Circuit decision is affirmed…then Examiners would need to make difficult and subjective determinations about the applicant’s intent and whether the applied-for mark contains political speech or concerns a matter of public importance.”

Elster filed his latest response with the Court on September 5, arguing that Section 2(c) “has the same provenance as [the provisions] in Tam and Brunetti,” and that “by requiring consent, it effectively precludes the registration of any mark that criticizes public figures—even as it allows them to register their own positive messages about themselves.”

The Motion Picture Association of America, AIPLA and Public Citizen have also weighed in. AIPLA argues that the Federal Circuit was correct to rule that the USPTO violated the First Amendment, but that it was the Office’s application of the statute, rather than its constitutionality, that is at issue.