TRUMP TOO SMALL Has Huge Implications For Trademark Act Section 2(c)

• Published date: 12 June 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Daniel S. Stringer and Margaret Esquenet

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...