USPTO Suspends Applications Including Criticisms of Known Living Figures

The U.S. Supreme Court will hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to register trademarks using the name of a living person without their consent. Scott Hervey and Tara Sattler discuss this on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Tara: The U.S. Supreme Court has agreed to hear the USPTO’s appeal of a Federal Circuit ruling that allows individuals to secure registration of a trademark using the name of living persons without that person’s consent. That's what we'll be discussing in this installment of the Briefing by Weintraub Tobin. Tara: Last year, the Federal Circuit overturned a decision from the USPTO Trademark Trial and Appeal Board in which the USPTO refused to grant a trademark registration for the mark TRUMP TO SMALL for use on t-shirts. The USPTO refusal was based on Section 2(c) of the Lanham Act, which requires the USPTO to refuse registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”. Scott: After the TTAB affirmed the trademark examiner’s refusal to register, the applicant, Steve Elster, appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that "the government has no legitimate interest in protecting the privacy of President Trump." Tara: Elster argued that the phrase was "political criticism" and accordingly protected by the First Amendment. The Federal Circuit agreed and overturned the USPTO's refusal to register. The USPTO appealed to matter to the Supreme Court and suspended applications on all pending applications for trademarks that are critical of public or government officials until the Supreme Court weighs in on the issue. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided. Scott: In its petition to the Supreme Court, the Trademark Offices argued that enforcing the decision conflicts with the plain language of section 2(c) of the Lanham Act. Tara: The Trademark Office also argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent's — not the refusal to register them — that would 'chill' such speech.” Scott: This is an interesting issue for the Supreme Court. Is a section 2(c) refusal to register the same thing as a government restriction on free speech? If the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, trademark examiners will have to make a decision about whether a particular trademark expresses protectable speech under the First Amendment. That isn't the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue and a case we will be watching. Thanks, Tara.