The U.S. Supreme Court continues to show interest in trademark issues with its recent grant of certiorari in another case pitting the Lanham Act against the First Amendment.
Applicant Steve Elster applied to register the trademark TRUMP TOO SMALL for t-shirts back in 2018. The US Patent and Trademark Office (“USPTO”) refused registration on the basis of Section 2(c) of the Lanham Act, which prohibits the registration of marks that consist of or comprise a name, portrait, or signature identifying a particular living individual except when the individual has provided his or her written consent.
On ex-parte appeal to the USPTO’s Trademark Trial and Appeal Board, the applicant argued that Section 2(c) of the Lanham Act is unconstitutional because it violates his First Amendment right to free speech, i.e., applicant’s right to criticize a political figure. The Board, however, disagreed. Affirming the refusal to register, the Board found (1) that the applied-for mark was clearly a reference to then-President Donald Trump, and (2) that Section 2(c) is viewpoint neutral and, therefore, does not run afoul of the First Amendment.
Applicant appealed to the Federal Circuit, which overturned the Board’s decision, finding that the USPTO’s refusal to register applicant’s mark constituted an unconstitutional restriction on free speech. The USPTO subsequently appealed the Federal Circuit’s decision to the US Supreme Court, which granted certiorari to review the case earlier this week.
This case follows other challenges lodged in recent years to provisions of the Lanham Act that prohibited registration of trademarks considered to be immoral, scandalous, or disparaging, all of which have been struck down by the Supreme Court on First Amendment grounds.