If you missed reading about this case, buckle up! It has some fascinating twists and turns, along with the opportunity to brush up on the Lanham Act and see how the First Amendment’s freedom of speech clause is now at odds with the Lanham Act over a three word phrase.
On Monday, June 5, 2023, the U.S. Supreme Court announced it will review the U.S. Patent and Trademark Office’s (USPTO’s) challenge of the Federal Circuit ruling that overturned the USPTO’s decision not to register the phrase “Trump too small” as a trademark. The Federal Circuit’s decision made new legal precedent – that the USPTO’s refusal to trademark the phrase violated constitutionally protected federal free speech rights as stated in the First Amendment.
Yes, that is a lot. Let’s break this down.
The phrase at issue in this case comes from a series of insults traded between former President Donald Trump and Florida senator Marco Rubio during the 2016 presidential campaign. Since 2018, Steve Elster has been unsuccessful in his attempts to register the phrase with the USPTO, for the purpose of displaying the politically-charged phrase on t-shirts.
The USPTO denied Elster’s trademark application as it appeared to be prohibited under § 2(c) of the Lanham Act (15 U.S.C. § 1052). This section states, “[n]o trademark…shall be refused registration on the principal register on account of its nature unless it–(c) [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.”
Elster then took the case to the Trademark Trial and Appeal Board (TTAB), who affirmed the decision in July 2020, agreeing the trademark application violated § 2(c) of the Lanham Act. In 2022, the Federal Circuit Court reversed the TTAB affirmation, stating the denial of Elster’s trademark violated Elster’s constitutional right to freedom of speech as stated in the First Amendment.
Which brings us full circle to the beginning of this post – the U.S. Supreme Court just announced that it will weigh in on this case, Vidal v. Elster. Oral arguments will likely be brought to the Court in late 2023 or early 2024.
Stepping back from the phrase itself can put this case into its extremely important context. There are several far-reaching issues that may be decided by Court with this case. The ability for an individual to trademark another individual’s name without consent. The resulting monetary gain received from trademarking another individual’s name without consent. And, at the core of this case, “…the right to convey core political messages on trademarks” as stated by Elster’s counsel Jon Taylor. Absolutely another case to follow, and, if you were unaware, you may be able to hear the oral argument in this case on the same day as it is heard by the Supreme Court.
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