On June 9, 2023, WTR quoted Sarah Brooks and Jonathan Ko on the constitutionality of the Lanham Act as it pertains to the Supreme Court’s upcoming “Trump Too Small” trademark case.
According to the article, when the Trademark Trial and Appeal Board (TTAB) rejected an application for “Trump Too Small” on t-shirts, it set into motion a heated debate about the constitutionality of the Lanham Act. Specifically, it called into question whether Section 2(c)—which prevents the registration of marks that contain a living person’s name or likeness without that person’s consent—interferes excessively with free speech rights. The Federal Circuit thought so. In February 2022, it ruled that the TTAB’s concern with protecting Donald Trump’s privacy and publicity rights did not outweigh applicant Steve Elster’s First Amendment right to ridicule a public figure. However, the U.S. Supreme Court has agreed to review that decision, giving the United States Patent and Trademark Office (USPTO) another opportunity to defend its ruling and, consequently, the provisions of the Lanham Act on which it was based. How the Supreme Court will rule likely hinges on how closely it believes the facts of this case align with those in Matal v. Tam and Iancu v Brunetti.
Although “this court has generally leaned towards broad application of First Amendment protections,” it may decide that these earlier precedents are of little relevance,” Brooks and Ko noted.
Some argue that the legislative restrictions under scrutiny in the “Trump Too Small” case differ from the restrictions that the Supreme Court held to be unconstitutional in Matal and Iancu because the registration of marks was denied because of the applicants' expressed opinions.
Although ultimately siding with Elster, even the Federal Circuit declined to find that the provision of Section 2(c) under scrutiny in this current caseis similarly viewpoint-specific. Emphasizing this point will likely be central to the USPTO’s strategy, Brooks and Ko said. Meanwhile, Elster will continue to advance the argument that barring the use of names in federal trademarks is an unconstitutional restriction of speech, regardless. Should he succeed, “we will likely see a spate of registrations for other marks with the names of celebrities, politicians and other public figures,” Brooks and Ko stress. These marks must still not suggest endorsement, “but the floodgates would be opened," they concluded.
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