This article was originally published to Seyfarth’s The Blunt Truth blog.

Republic Technologies (NA) LLC (“Republic”) filed an application to register the proposed mark 4:20 with the United States Patent and Trademark Office (“USPTO”).  Republic amended its goods twice during prosecution of the application and ultimately sought to register “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis” (emphasis added). The USPTO alleged that consumers would understand 4:20 to mean cannabis, the mark misdescribes non-cannabis related goods, and consumers would believe the misrepresentation. Therefore, the USPTO refused registration alleging that the mark was deceptively misdescriptive of the goods in the application. Republic appealed the decision to the Trademark Trial and Appeal Board (the “Board”). But the Board saw through the smoke of Republic’s arguments and affirmed the refusal. 

Republic is a leading provider of smoking accessories. Republic initially filed its application for the mark 4:20 for use in association with the goods “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves.” Perhaps familiar with the many uses of Republic’s goods, the USPTO refused the application on mere descriptiveness grounds. It alleged that consumers understand 4:20 to mean cannabis and the goods describe a product containing or to be used with cannabis. The USPTO also asked Republic to provide additional information about its goods. In particular, whether the goods contain or would be used in connection with cannabis or marijuana. 

Continue Reading 4:20 Unfriendly – TTAB Says 4:20 is Deceptively Misdescriptive of Goods Not Used with Cannabis

Thursday, January 25, 2024
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About the Program

Join Seyfarth partners Ken Wilton and Lauren Leipold for an examination of pivotal 2023 developments in trademark litigation, from U.S. Supreme Court decisions to new guidance from federal appellate courts, district courts, and the USPTO. This webinar will provide actionable takeaways for your legal practice in 2024, from doctrinal shifts in the application of trademark law to technicalities in TTAB procedure. Learn how these developments will impact the ongoing protection, maintenance, and enforcement of trademarks in the United States and beyond.

Speakers

Kenneth Wilton, Partner, Seyfarth Shaw LLP

Lauren Leipold, Partner, Seyfarth Shaw LLP

Continue Reading Upcoming Webinar! How to Win Your Next Trademark Battle: Lessons Learned in 2023

Decking the halls with festive flair is a beloved tradition, from cozy and simple to dazzling displays that could rival Clark Griswold’s winter wonderland. In this yuletide landscape, lights play a starring role, sparking whole industries focused on holiday home illumination. A centerpiece of this seasonal spectacle is often the twinkling Christmas tree.

Traditional tree lighting mainly focuses on the tree’s exterior, with their daytime wiring detracting from the tree’s aesthetic, requiring the wiring to be tucked away under tinsel and ornaments. Enter U.S. Patent No. 7,784,961, with its “clip-attachable light strings for Christmas tree branches,” a merry makeover for tree lighting. This jolly invention lights up each branch individually, featuring a central bus wire nestled near the trunk, branching into 5 to 10 light circuits, each sporting 10 to 20 bulbs. Clipped at each branch’s end, these strands can be extended to fit any tree, from a small spruce to a grand fir, creating a more enchanted, branch-by-branch illumination compared to the old ring-around-the-rosy style.

Continue Reading Legal Lessons from Holiday Lights: Clarity in Patent Drafting

Originally posted on The Blunt Truth blog

A Texas appellate court recently upheld a decision to prevent a ban on the sale of delta-8 tetrahydrocannabinol (THC) products in the state.  Tex. Dep’t of State Health Servs. v. Sky Mktg. Corp., No. 03-21-00571-CV, 2023 BL 341460, 2023 TX App Lexis 7448.  The decision allows cannabis companies to continue selling delta-8 THC goods in Texas and establish a reputation for their brands.  In contrast, delta-9 THC remains federally illegal and banned from sale under the Controlled Substances Act.  Delta-8 THC and delta-9 THC are distinct cannabinoids (i.e., compounds) in the cannabis plant.  However, the legality of the delta-8 industry remains clouded in smoke.  This case, and its counterpart in Virginia, could have a significant impact on brand owners’ ability to establish rights in their cannabis-related trademarks.

What is Delta-8, 9, 10?

In 2018, Congress enacted the Farm Bill, which distinguished prohibitions on marijuana from hemp.  The former would remain illegal, while the latter would not.  The Farm Bill defines hemp as “the plant Cannabis sativa L. and any part of that plant, including … all derivatives, extracts, cannabinoids, … with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis” (emphasis added).  Notably absent is any reference to delta-8 THC. 

With this advantageous change in the law, the hemp industry has thrived.   The value of hemp production was estimated at $824 million in 2021 according to the U.S. Department of Agriculture.  See Value of hemp production totaled $824 million in 2021.  Hemp is often used to create a variety of products including rope, paper, clothing, and insulation.  Conversely, marijuana is primarily used for its psychoactive effects.

There are numerous cannabinoids found in the cannabis plant.  The most well-known, whether or not consumers know it by name, is delta-9 THC.  Delta-9 is the primary psychoactive cannabinoid responsible for the “high” associated with marijuana.  But other cannabinoids, like delta-8 THC and delta-10 THC, also have psychoactive effects.  These cannabinoids are generally considered less psychoactive.  See e.g., Cannabis-derived products like delta-8 THC and delta-10 THC have flooded the US market.  As more hemp businesses enter this burgeoning market, it is important to ensure consumers have the ability to distinguish between them.  Trademarks, i.e., the brand name, logo, or other insignia that identifies the source of goods or services can accomplish this goal.

The Benefits of Registration

A trademark can signal to consumers a connection between a product and a trusted source.   Registering a trademark with the United States Patent and Trademark Office (USPTO) provides nationwide priority for the owner as to the goods or services included in the registration.  Registration also provides the ability to sue competitors in federal court for using a trademark that consumers may find confusingly similar.  Securing a federal registration can impede competitors from exploiting a trademark owner’s hard-earned goodwill and brand-loyalty.

The USPTO will not register a trademark for federally illegal goods or services.  But cannabis companies may be able to register their hemp related trademarks.  The USPTO issued Examination Guide 1-19, which states that applications for hemp related trademarks must meet the requirements of the Farm Bill.  We’ve already seen registrations for cannabis related goods that contain less than 0.3% delta-9 THC.

A hemp related trademark registration could allow the registrant to prevent a competitor from using a confusingly similar trademark.  This is important as competitors may try to pass off their lower quality goods as if emanating from the registrant, crimping the trademark owner’s goodwill.  A registration can stave off this damage or allow the trademark owner to pursue recompense and an injunction against the competitor.  And so, a hemp related trademark registration can be valuable for cannabis companies. 

Different Treatments of Delta-8

Texas is one of several states that does not allow for the medical or recreational use of marijuana.  But Texas, among other states, has seen a blooming delta-8 THC market.  See Texas court upholds injunction allowing delta-8 sales.  Concerned with the effects of delta-8 THC, the Texas Department of State Health Services implemented a ban on the sale of goods containing the compound.  

Sky Marketing Corp., a Texas company that operates as Hometown Hero, provides delta-8 THC goods, in part as an alternative to those who use opioids or other drugs.  See CBD, delta-8, THCA: Texas hemp shop raid highlights legal, safety issues.  Concerned about the affect the ban would have on its business, Hometown Hero challenged the ban as being incongruous with the Farm Bill.

A Texas district court found in Hometown Hero’s favor and entered an injunction preventing the ban from going into effect.  The Texas appellate court upheld the decision holding that the ban was not effectuated through the proper channels.  At this stage, the substantive issues have not been addressed.  While the case is pending, companies like Hometown Hero can continue to sell their delta-8 THC goods in Texas.  

In contrast, a Virginia court allowed a ban on cannabis to go into effect.  The Virginia ban assesses whether a product is considered hemp based on the “total THC” in the product, including both delta-9 and delta-8 THC.  Therefore, hemp would be banned unless the combined THC concentration was less than 0.3%.  

The plaintiffs in Virginia sought an injunction against this ban, arguing that the Farm Bill preempted the Virginia law.  They asserted that the Farm Bill defined hemp solely based on its delta-9 THC makeup.  Unconvinced, the Court in the Eastern District of Virginia issued an order that the Farm Bill did not prevent a state from regulating hemp more stringently.  Therefore, the Farm Bill did not preempt a state law banning products based on their total concentration of THC.  N. Va. Hemp and Agric. v. Virginia, No. 1:23-cv-1177, 2023 U.S. Dist. LEXIS 195168 (E.D. Va. Oct. 30, 2023).  The case is currently pending in the Fourth Circuit. 

Delta-8 THC goods may be compliant with the Farm Bill.  This may allow for cannabis companies to accrue rights in trademarks used in connection with those goods.  The USPTO rejects applications for goods with high delta-9 THC concentrations and related services.  But registration may remain an option for goods with a low delta-9 THC and high delta-8 THC concentration.

Delta-8 Trademarks v. Delta-9 Trademarks

The offering of goods or services in commerce can allow for trademark rights to accrue at common law.  So, even if federal registration weren’t available, cannabis companies may establish common law trademark rights by providing delta-8 THC goods or services.  On the other hand, cannabis companies that provide delta-9 THC goods not in compliance with the Farm Bill cannot, at the federal level, because those goods are federally illegal.  Sellers of delta-8 THC products may be able to use this distinction to establish rights in trademarks and have them enjoy priority over their counterparts, including companies that hope to join the market once delta-9 THC is rescheduled, if ever.

At the federal level, delta-8 THC providers may find success at the USPTO when attempting to register their hemp related trademarks.  If a product has a low delta-9 THC concentration but a high delta-8 THC concentration, it may be compliant with the Farm Bill.  And so, the trademark for such goods may be registered with the USPTO.   

Ensuring that an application indicates that the goods meet the Farm Bill’s requirements could reduce the risk of a refusal by an Examiner.  Some applications for hemp related goods have registered because of a limitation to those with not more than 0.3% delta-9 THC.  It’s also important to ensure that applicants are candid with Examiners, so the chances of registration aren’t half-baked.  We previously discussed this in a separate post.  See Blunders That Made ‘Bakked’ Cannabis TM Go Up In Smoke.   

Given the divergent views of the states, it can be difficult for companies in the cannabis industry to establish priority and determine whether to apply for federal registration.  As a result, cannabis companies must be wary of what rights may be established concerning their valuable brands.

‘Twas a day in December, when all through the blog, we were writing ‘bout trademarks, as if in a fog.  When, what to our wondering eyes should appear, but holiday trademarks, so lovely and dear.  The PTO said, as it reviewed the files, we’ve got holiday trademarks, we’ve got ‘em in piles!

Have Yourself a Merry Little Trademark

Many folks enjoy watching holiday-themed romantic comedies.  You know the ones: a professional woman living in the big city goes to her small hometown for the holidays, falls in love with the recently widowed owner of a Christmas tree farm that the professional woman’s company is trying to destroy, the Christmas tree farm is saved, and the rest is history.  We’re pleased to report that Christmas romance is not just for the movies!  MR. CHRISTMAS became a registered trademark for “Christmas Ornaments and Decorations of the Non-Electrical Type” way back in 1966 (Registration No. 804025).  For decades, Mr. Christmas was alone, pining for his soulmate (we assume).  But then, in 2021, a Christmas miracle occurred: he found his true love, Mrs. Christmas (i.e., MR. CHRISTMAS’s owner successfully registered the MRS. CHRISTMAS mark, Registration No. 6434862).  Let’s make this one into a movie, rom-com producers!

Some folks love Christmas so much they want to keep the Christmas spirit alive all year.  As Ebeneezer Scrooge put it after being visited by the three ghosts: “I will honour Christmas in my heart, and try to keep it all the year.”  Scrooge wasn’t the only one who had that idea: a business owner registered ALWAYS CHRISTMAS & Design as a service mark in 1995 (Registration No. 1871712).

Speaking of Ebeneezer Scrooge, in 2006 and 2007, a German company attempted to register A CHRISTMAS CAROL and A Christmas Carol: Scrooge’s Ghostly Tale for use in connection with video games (what???) (Serial Nos. 78907963, 77074598).  The USPTO refused to register A CHRISTMAS CAROL, alone, because the Examining Attorney determined that the mark was merely descriptive.  The Examining Attorney did allow the application for A CHRISTMAS CAROL: SCROOGE’S GHOSTLY TALE to proceed to publication after the applicant agreed to disclaim “A CHRISTMAS CAROL”  and “SCROOGE” as descriptive.  No one opposed registration, but ultimately, the applicant failed to provide a statement of use evidencing use of the mark in commerce. Therefore, the application was deemed abandoned. Humbug!

Devoid of old-fashioned jingles and spooky narratives, the USPTO revived the party vibes.  In 2021, they allowed World of Illumination to register ROCKIN’ CHRISTMAS (Reg No. 6437502) for a drive-through light show so participants can rave and rock on in their joy-mobiles!

Hanukkah, Oh Hanukkah, Come Register the Trademarks

The same company that owns the MR. CHRISTMAS and MRS. CHRISTMAS registrations also holds a 2022 registration for a stylized version of MR. HANUKKAH (Registration No. 6854127).  As far as we can tell, however, MR. HANUKKAH does not yet have a partner.  We can only hope that one day true love will find MR. HANUKKAH as well.  See, we already have a rom-com movie sequel lined up!

Unlike MR. HANUKKAH, HANNAH THE HANUKKAH HERO (Registration No. 5082816) had to overcome some struggles to achieve registration for use in connection with “Plush dolls.”  In August 2016, the USPTO issued a notice of abandonment in connection with the application because the applicant had failed to timely file a statement of use.  Things were looking grim for HANNAH, but she persevered: a few days later, the Office accepted her petition to revive the application and accepted her specimen and statement of use, paving the way for registration of the mark in November 2016.  That was a close one! 

We wonder if MR. HANUKKAH or HANNAH have met the newcomer, HANUKKAH VERONICA THE MITZVAH FAIRY, registered in August 2023 (Registration No. 7146448).  We have a feeling those three could be good friends.  Sadly, they will have to carry on without BRUCE BRUCE THE HANUKKAH MOOSE (Serial No. 77617390) or MIRACLE THE HANUKKAH BEAR (Serial No. 75800094).  Though the applicants were originally very excited to seek registration, both later abandoned their efforts, failing to timely file statements of use.  Rest assured, though, someone is bound to catch the festive bug and meet new friends.  Maybe while initiating a spirited game of HANUKKAH PONG (Registration No. 5645803) this holiday season.

Happy Kwanzaa! Together, There Are Many Trademarks We Can Register

Kwanzaa celebrations involve seven principles symbolized by seven candles.  SEVEN SYMBOLS OF KWANZAA is also a registered trademark for “On-line wholesale and retail store services featuring home décor” (Registration No. 6587218).  For those needing a caffeine fix during their Kwanzaa celebrations, KWANZAA is a registered trademark for coffee (Registration No. 1821575).  For those looking to have a little fun during Kwanzaa, there is KWANZAA BINGO, which registered in March 2023 (Registration No. 7057474).  For those looking to keep the party vibes going, head to KWANZAA CRAWL (Registration No. 5361645).  During the week-long celebrations, some may be ready for cheerful relaxation, and the KWANZAA YOGA CHALLENGE may be just for you (Registration No. 5905518).

Unfortunately for the home bodies and festive movie lovers, the Grinch stole the munchies!  A USPTO examining attorney refused to register KWANZAA POPCORN for “Popped Popcorn” (Serial No. 78114129) based on confusing similarity with prior-registered KWANZAA KRAVINGS for “popped popcorn” and other snacks (Registration No. 2620791).  Given the fact that both marks begin with KWANZAA and are for identical goods, that finding is not entirely surprising.

If the KWANZAA POPCORN application had been filed today, it wouldn’t have been blocked by KWANZA KRAVINGS because that mark owner ultimately did not produce sufficient evidence of use to sustain the registration.  It was cancelled in May 2009.  But we wonder whether the KWANZAA POPCORN applicant would nonetheless get tripped up by the descriptiveness of “POPCORN.”  In any event, the SPIRIT OF KWANZAA is alive and well: that mark was registered for community outreach and related services in 2002 (Registration No. 2538355).

A Trademark for the Rest of Us

We also can’t forget the Festivus holiday, particularly since FESTIVUS registered for printed matter and paper goods, such as notebooks diaries, note cards, greeting cards, decals, and printed invitations (Registration No. 5138881).  The registrant’s specimens filed with the USPTO show some potential methods for inviting people to your Festivus celebration!

FESTIVUS separately registered (Registration No. 5251920) for toys in the nature of games and playthings, namely, game equipment sold as a unit for playing a board game.  Who doesn’t want a Festivus board game to play after airing grievances and performing feats of strength?  Sounds like a great way to wind down the holiday season.

Happy Holidays from All of Us at Gadgets, Gigabytes & Goodwill!

On December 7, 2023, the Biden administration announced a blueprint for a framework that may be a tough pill to swallow for the pharmaceutical industry. This framework suggests that drug prices should be a crucial factor in determining whether the public can access taxpayer-funded meds without breaking the bank. More strikingly, it allows government agencies to license the patents of these drugs to other parties if the original cost is deemed excessively high.

The crux of this proposal lies in the exercise of “march-in rights,” a concept rooted in the Bayh-Dole Act of 1980.  Before the Bayh-Dole Act, the government would often claim ownership of any invention developed with its support, leading to many innovations languishing undeveloped. The Bayh-Dole Act changed this, encouraging research institutions with federal funding to patent and license their inventions, thereby benefiting the public.  Under Bayh-Dole, any non-profit organization or small business is generally permitted to retain title to inventions developed with federal funding, provided the institution commits to commercialization of the invention. Furthermore, a 1983 policy extended Bayh-Dole protections to all companies regardless of size.

March-in rights empower the federal government to intervene and relicense patents arising from federally supported research, especially if there is a failure in making the research commercially available or addressing health or safety needs. In contrast to the license the government already receives in a federally-funded invention, which must be used for the benefit of the government, a license granted by the government under the march-in rights provision permits the government to more broadly assign licenses, including to a patent-holder’s competitor. 

While the Bayh-Dole Act expressly contemplates march-in rights and delineates specific circumstances in which the government may exercise these rights, the government has never exercised these rights in the 43-year history of the Act, despite several petitions that, similar to the announced framework, cited high prices as the basis for the lack of practical application.

Furthering this development, on December 9, 2023, the National Institute of Standards and Technology (NIST) sought public input on the Draft Interagency Guidance Framework for Considering the Exercise of March-In Rights. This framework aims to provide a structured approach for when and how march-in rights might be used, particularly when the cost or terms of a product are unreasonable. The framework outlines potential scenarios for application and directs agencies to consider the broader impact on the research and development ecosystem.

One notable scenario presented in the framework is during the early stages of a respiratory virus pandemic (i.e., COVID-19). For example, if a company, supported by government funding to develop improved face masks, significantly hikes prices during the pandemic, the government might use march-in rights to license the patent to other entities, thereby preventing price gouging and supply suppression in a health crisis.

However, the framework emphasizes the need for comprehensive information before exercising these rights. This includes assessing whether there’s an unmet need, whether similar prices are being charged by other manufacturers, and the legitimacy of not licensing to other manufacturers.

The proposal also extends beyond pricing issues. It considers situations where a licensee might shelve an invention to favor a competing product or when a disaster disrupts the manufacturing of critical medications. In such cases, the focus is on whether the contractor is exploiting a health or safety need for higher charges.

In essence, this framework represents a bold move in the ongoing drama of drug pricing. It’s a mix of government oversight, economic twists, and a dash of “not so fast” to companies thinking they can turn a health crisis into a cash cow. Additionally, the government’s foray into exercising these rights could be a cause for concern in the government contracts industry, where companies have relied on the government’s disinterest in exercising march-in rights when pursuing federally-funded R&D. Stay tuned to see how this plays out!

In the latest skirmish between Sarah Silverman and other authors against Chat GPT-maker OpenAI, OpenAI submitted a new decision from a California federal court in support of its attempt to dismiss the Silverman plaintiffs’ claims. According to OpenAI, that other court rejected theories and claims that are nearly identical to Silverman’s claims against OpenAI. If the court hearing Silverman’s claims agrees, copyright holders looking to sue AI companies in the future may find themselves facing long odds on certain claims.

The new California decision cited by OpenAI comes in the wake of a similar decision in a case involving an AI image generator. Like the court in that image-generator case, the new decision cited by OpenAI dismissed most of the plaintiffs’ copyright claims and other claims, although it did so with leave to amend all but one state-law negligence claim. The court in this new decision rejected as “nonsensical” the plaintiffs’ argument that large language models (or LLMs) “are themselves infringing derivative works,” holding that “[t]here is no way to understand the [LLMs] themselves as a recasting or adaptation of any of the plaintiffs’ books.” Similarly, the court rejected the notion that “every output of the [LLMs] is an infringing derivative work,” stating that “the complaint offers no allegation of the contents of any output, let alone of one that could be understood as recasting, transforming, or adapting the plaintiffs’ books. Without any plausible allegation of an infringing output, there can be no vicarious infringement.”

Continue Reading “The Plaintiffs Are Wrong”: OpenAI Submits New Authority in Attempt to Knock Out Sarah Silverman’s Claims

Lauren Leipold and Ken Wilton co-authored “Last 12 Months See New Court Precedents and Fresh Ways to Challenge Existing Registrations,” the exclusive United States chapter for WTR’s Trademark Litigation Review 2024. Lauren and Ken discussed an overview of key developments in trademark litigation in the United States over the past year. WTR describes the Reviewas “cast[ing] an expert eye on some of the most pressing issues facing those involved in litigation on both sides of the divide, blending analytic insight with on-the-ground expertise from the key regions of the Americas, the Asia-Pacific, and Europe, the Middle East and Africa.”  You can read the full article here.

Thanksgiving is the start of the holiday season, a beloved time of the year where family and friends gather over delicious meals to share and create memories and to express love and gratitude. Thanksgiving also commences the annual Thanksgiving showdown, when silent (or not so silent) competitiveness emerges in the kitchen and beyond.

Activate: Feast Mode

The USPTO’s conduct sometimes suggests that Thanksgiving is, in fact, competitive and challenging. A USPTO examining attorney rejected an application for ULTIMATE THANKSGIVING CHALLENGE (Application No. 88445011) for being merely descriptive. The applicant, Food Network, intended to use the mark for a televised cooking competition where participants prepared Thanksgiving food. In an office action, the examining attorney wrote that “both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Together, the words ‘ULTIMATE THANKSGIVING CHALLENGE’ do not create a unique meaning, but a descriptive one. The words mean the best or most extreme Thanksgiving holiday competition.” Perhaps the examining attorney thought that a Thanksgiving cooking competition show was too similar to the annual family face off that happens in homes across America. Food Network abandoned the application, but The “Ultimate Thanksgiving Challenge” television show ran for two seasons.

Don’t make fun of the turkey, it’s been roasted enough today.

Most of us agree that the ultimate Thanksgiving challenge is surviving Thanksgiving dinner. Some of us want a reward for making it through. The USPTO says there is no need to state the obvious, however. The USPTO denied an application for THANKSGIVING FAMILY DINNER SURVIVOR (Application No. 88686100) for clothing products. The USPTO examining attorney refused the application because the attorney decided that the phrase is a frequently-used, humorous expression that merely conveys an informational message and, therefore, does not function as a trademark. Similarly, the USPTO refused an application for THANKSGIVING NAP SWEATER (Application No. 87664935). The USPTO examining attorney decided that the mark was a decorative slogan with little or no particular source-identifying significance. Simply put, eat hard and sleep harder, but we’re all Thanksgiving family dinner survivors and we don’t need a t-shirt or sweater to commemorate the experience.

Is it too soon to be asking about leftovers? Asking for a friend. 🐾

A trademark registration for TINY THANKSGIVING DAY DINNER (Registration No. 5060548) for pet food sits on the Trademark Electronic Search System as a reminder that while we conquer mountains of mashed potatoes, gobble down slices of turkey, and fantasize about our Thanksgiving nap, our pets are never too far away. Don’t let your furry friends feel neglected this Thanksgiving holiday, even the Ultimate Party Thanksgiving Organization, er, that is, the USPTO thinks they deserve some attention. Like many Thanksgiving diners, however, pets still have to battle on Thanksgiving: the USPTO did not approve the application until the applicant disclaimed the exclusive right to use “TINY” or “DINNER” other than as part of the entire phrase “TINY THANKSGIVING DAY DINNER.” Woof!

Final Feast

Sometimes the USPTO leaves applicants feeling thankful. Other times, the application process feels like a battle at the dinner table with your uncle. Accepted or rejected, trademark applications add flavor to all of our intellectual property feasts. Happy Thanksgiving, and may your trademark portfolio be as bountiful as your Thanksgiving dinner table!

In what appears to be a shift from prior decisions striking down portions of the federal Lanham Act on First Amendment grounds, the U.S. Supreme Court seems likely to rule against a trademark applicant seeking to register a mark commenting on former President Donald Trump.

As we wrote earlier this year, the Supreme Court granted cert to review Vidal v. Elster, which involves the U.S. Patent and Trademark Office’s (USPTO’s) denial of Steve Elster’s application to register the trademark TRUMP TOO SMALL for t-shirts. In refusing registration, the USPTO cited 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. Elster claims, however, that this section of the Lanham Act is unconstitutional because it violates his First Amendment right to free speech, i.e., his right to criticize a political figure.

This case is the third in a trio of cases pitting the Lanham Act against the First Amendment. The high court previously struck down provisions of the Lanham Act prohibiting registration of marks that are disparaging (Matal v. Tam) and marks that are immoral or scandalous (Iancu v. Brunetti). In the instant case, the Justices are considering whether the Lanham Act’s prohibition against registration of marks that identify a particular individual (where the individual’s consent is not of record) similarly runs afoul of the First Amendment. 

Based on the Justices’ remarks during oral argument on November 1, the Court appears poised to side with the USPTO and affirm the refusal of Elster’s trademark application. Of the justices who asked questions, each appeared skeptical that Elster’s First Amendment rights would be infringed by virtue of the USPTO denying his trademark application. For example, Justice Gorsuch referenced the “long historical tradition [of] … content-based restrictions” when a person’s name is involved. Justice Sotomayor was more direct: “The question is, is this an infringement on speech? And the answer is no. [Elster] can sell as many shirts with this saying, and the government’s not telling him he can’t use the phrase.”

In another notable exchange, Justice Kagan asked Elster’s counsel to give an example of a case “that would show that the government is prohibited from declining to subsidize expressive activity in a way that is not viewpoint-based.” When counsel could not come up with an example, Justice Kagan responded by identifying a number of decisions that have held that “as long as it’s not viewpoint-based, government can select, government can give the benefit to some and not the benefit to others.”

One of the key differences between this case and other recent trademark decisions involving the First Amendment, it seems, is that the prohibition in question (trademarks identifying a particular individual) is viewpoint neutral, whereas the prohibitions the Court previously struck down (disparaging, immoral, and scandalous trademarks) were by their nature not viewpoint neutral.