First Amendment rights and trademark rights have recently become the topic of several cases brought before the Supreme Court. Most recently, The Supreme Court decided to take Katherine K Vidal v. Steve Elster, a case on the USPTO’s decision to refuse a trademark registration criticizing former President Donald Trump. This case is an important one to watch for many in the legal community, for its ruling could have a significant impact.
Background of The Case
In January 2018 Steve Elster applied to register the trademark “Trump Too Small” for t-shirts and other apparel, this trademark application was refused registration. Then, in July 2020 this refusal was affirmed by The Trademark Trial and Appeal Board under violation of 2c in the Lanham Act’s prohibition on registration of any mark that “consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent.”(Hu) The Federal Circuit then overturned the TTAB’s decision in February 2022 ruling that the decision unconstitutionally restricts free speech. The government’s interest in protecting privacy and publicity rights do not outweigh Elster’s “substantial” First Amendment right to criticize public figures, the appeals court said. The USPTO filed a certiorari petition and urged justices to clarify “whether a Lanham Act bar” on the registration of a trademark is “a condition on a government benefit or a simple restriction on speech,” (Hu) claiming that earlier high court precedent did not answer the question. They also continue to claim that enforcing this decision directly conflicts with provisions in the Lanham Act. The USPTO has also decided to suspend action on pending applications critical of government officials or public figures until a ruling is made.
Implications of Case
The impact of this decision could potentially have a significant and far-reaching impact, affecting much more than just registration of a trademark. If the court reaffirms the ruling in favor of Elster it will be a remarkably interesting change in the trademark world as it would essentially allow the registration of trademarks with famous people’s names. It also could have the unintended effect of curbing the speech of others since it would give him the proprietary rights to the phrase. Allowing Elster this property right could also restrict further political commentary of President Trump by others.
This is not the first case to go to the Supreme Court on the grounds of first amendment rights in the trademark world. In 2017 the Supreme Court struck down a ban on racist trademarks in Matal v. Tam and in 2019 the court invalidated a similar ban on profane or lewd material in Iancu v. Brunetti. In Matal v. Tam, “the high court ruled that the trademark statute’s ban on the registration of material that “may disparage” groups of people — such as racist or demeaning terms — violated the First Amendment by restricting speech.”(Hu) Then in Iancu v. Brunetti the justices struck down a ban on the registration of profane or lewd trademarks on the grounds it was an unconstitutional form of discrimination against viewpoint, which is rarely allowed under the 1st amendment. The reasoning behind these two cases has led some to speculate whether the Lanham Act will face change or alteration when addressed by the high court. There is also speculation that the court will instead take an opposite approach from Iancu and Matel and instead take a similar approach from Jack Daniel’s trademark suit. In the Jack Daniels lawsuit, the court decided a parody of a Jack Daniels bottle was not constitutionally protected from a trademark suit from the Jack Daniels brand owners. It will be interesting to see which path the Court decides to follow in their decision or if they do something completely different.
First amendment rights and adequate protections for trademarks are both undoubtedly important aspects and finding a solution to protect both is particularly important. As we await the Supreme Court decision on Vidal v. Elster, it is interesting to look at the trademark world today and the potential changes that could occur as a result of this outcome.
Karpan, A. (2023, June 5). Supreme Court to Review “Trump Too Small” TM Fight. Law360. https://www.law360.com/articles/1684571?scroll=1&related=1
Hu, T. (2023a, June 5). “Trump Too Small” At The High Court: What You Need To Know. Law360. https://www.law360.com/ip/articles/1685030
Tarr, M. (2023, June 29). A “Trump Too Small” TM Registration Could Curb Free Speech. Law360. https://www.law360.com/articles/1694296?scroll=1&related=1