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Currently before the U.S. Supreme Court, the case of Vidal v. Elster is scheduled for oral argument on November 1, 2023. Not unlike the Jack Daniel’s decision from earlier this year, this case will address implications at the crossroads of free speech and trademark law. However, unlike Jack Daniel’s, this case does not concern trademark infringement; rather, Vidal v. Elster found its way to the Supreme Court after the United States Patent and Trademark Office (“USPTO”) refused to register Elster’s attempt to register his trademark.
I recite the facts as provided in the Examining Attorney’s Appeal Brief, the last document of record in Elster’s federal trademark registration application file prior to external judicial review:
On January 1, 2018, [Elster] filed an intent-to-use application for registration on the Principal Register for the standard character mark TRUMP TOO SMALL for goods identified as “Shirts; Shirts and short-sleeved shirts; Graphic T-shirts; Long-sleeved shirts; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Sweat shirts; T-shirts; Tee shirts; Tee-shirts; Wearable garments and clothing, namely, shirts” in International Class 25.
On February 19, 2018, the [Examining Attorney] refused registration of the applied-for mark under Trademark Act Section 2(c), 15 U.S.C. §1052(c), on the ground that the mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.
. . .
On January 29, 2019, [Elster] filed a request for reconsideration of the final refusal, asserting that the applied-for mark is core political speech about President Donald Trump, a public figure, and is therefore protected under the First Amendment.
On this ‘free speech vs. trademark law’ posture, the application was refused, and Elster sought consideration by the Trademark Trial and Appeal Board. The TTAB affirmed “the refusal to register the proposed mark under Section 2(c) on the ground that it comprises the name of President Donald Trump without his written consent,” while likewise addressing its lack of authority to declare Section 2(c) unconstitutional. On appeal to the Federal Circuit, the Court disagreed, ruling that the refusal to register improperly restricted Elster’s right to free speech.
The TTAB posited that “provisions of the Trademark Act do not control an applicant’s use of a proposed mark, but only set criteria for trademark registration.” As here, Elster is free to sell t-shirts with “Trump Too Small” printed on them; a refusal to register his use as a trademark does nothing to restrict his speech rights. By the TTAB’s determination, his speech is not limited because Elster can use “Trump Too Small” as he pleases: he just cannot be afforded the additional benefits that come alongside a USPTO registration certificate.
The Federal Circuit saw this issue differently. It noted: “We recognize, as the government contends, that section 2(c) does not prevent Elster from communicating his message outright. But whether Elster is free to communicate his message without the benefit of trademark registration is not the relevant inquiry—it is whether section 2(c) can legally disadvantage the speech at issue here.”
The Federal Circuit discredited the USPTO’s categorization of restricting Elster’s speech, and did not find its rationales justified in such a situation where the speech at issue offered criticism on a public official. Specifically, Section 2(c) requires consent of a living individual for privacy and right-to-publicity reasons for the named person, but these principles are trumped by the need to protect speech that covers matters of public importance. Where the mark in question includes the name of a political figure or other significantly newsworthy individual, the USPTO does not have a compelling government rationale for curtailing important, First Amendment-protected speech, and, as such, the Federal Circuit found the Office’s refusal to register TRUMP TOO SMALL unconstitutional.
Per the TTAB ruling, Section 2(a)’s false association clause and Section 2(c)’s requirement of consent of living individuals are distinguishable from Section 2(a)’s disparagement and immoral/scandalous provisions, of which have been struck down by the Supreme Court as viewpoint discriminatory in Matal v. Tam and Iancu v. Brunetti. The relevant sections here are viewpoint-neutral, whereby a refusal on these grounds is without discriminatory treatment against any particular speech or message; it doesn’t challenge the substance of the applied-for mark outside of the named individual. The Supreme Court had previously made clear that its holdings in the viewpoint-discriminatory cases did not apply to neutral provisions of the Lanham Act.
The Federal Circuit saw the viewpoint distinction irrelevant, as it viewed that the speech at issue “is entitled to First Amendment protection beyond protection against viewpoint discrimination.” Regardless of the standard applicable to viewpoint-neutral speech, the Federal Court determined that the USPTO failed to demonstrate a substantial government interest, as discussed above.
Two of the world’s largest trademark organizations have filed amicus briefs in this case, and, interestingly, they have taken up opposing stances, each advocating for independent outcomes in Vidal v. Elster. The International Trademark Association filed a brief that voiced support for the TTAB’s ruling, arguing that the relevant statutory provisions do not restrict speech in any meaningful way. In contrast, the American Intellectual Property Association submitted materials that agree with the Federal Circuit’s finding that the refusal to register TRUMP TOO SMALL violated Elster’s First Amendment rights. Clearly, this is a divided issue amongst the trademark community.
Does ‘false association’ grounds for refusal make living-individual-consent grounds duplicative where free speech is concerned? To an extent. Even if the USPTO can no longer refuse applicants for failing to receive prior consent, there will still be concerns that unconsented uses of an individual’s name will result in a false association. For example, an application to register MARK CUBAN CIGARS may be able to bypass living-individual-consent concerns, but the application could still be rejected for bearing a false association with an individual.
Will now any refusal to register, regardless of reasoning, be violative of First Amendment speech rights? No. The Federal Circuit’s finding of unconstitutionality was rooted in – in their view – the weak government interests in restricting the speech. For a likelihood-of-confusion refusal or a mere descriptiveness refusal, that would not be the case; surely, the USPTO has a strong interest in preventing registration of too similar or too descriptive marks. But this case does call into question which refusal grounds will be struck down for free speech reasons next.
To view a version of this article with full citations in footnote form, click the PDF link here.