28 July 2023Muireann Bolger

’Trump too small’ TM must be refused, says USPTO

US agency claims that applied for mark contravenes Lanham Act | Federal Circuit says barring slogan’s registration conflicts with free speech.

The US Patent and Trademark Office ( USPTO) has urged the US Supreme Court to rule that its refusal to register ‘Trump too small’ as a trademark does not violate the right to free speech.

The case emerged when California-based lawyer and activist Steve Elster tried to register the mark, so he could put it on shirts and hats.

But the USPTO later dismissed the application on the ground that the mark contravened the Lanham Act by including the surname of a living individual without Donald Trump’s knowledge or permission.

The US Court of Appeals for the Federal Circuit overturned the USPTO’s decision last year, finding that a refusal to register the mark unconstitutionally restricted free speech, which is protected by the First Amendment of the US Constitution.

Earlier this year, SCOTUS agreed to review the ruling.

An erroneous ruling

In its brief filed on July 25, the USPTO argued that the Federal Circuit’s finding was erroneous.

“Both on its face and as applied to the mark at issue here, Section 1052(c) [of the Lanham Act] does not restrict speech, but simply imposes a reasonable, viewpoint-neutral condition on the benefits available under the federal trademark-registration program,” it said.

The USPTO added that, conversely, the Federal Court’s decision would have a chilling effect on free speech.

“While the court of appeals expressed concern about respondent’s free-speech right to criticise public officials, the court’s decision makes it easier for individuals like respondents to invoke federal enforcement mechanisms to restrict the speech of others.”

The office noted how SCOTUS has twice addressed free speech issues in relation to federal trademark registration in recent years in Iancu v Brunetti (2019) and Matal v Tam (2017).

In both of those cases, the court concluded that the USPTO’s refusal to register the marks in question had violated First Amendment rights.

No ‘constitutional basis’

But the USPTO insisted that these cases were markedly different from the issues at play in this particular case, arguing that, unlike in Tam and Brunetti, the challenged Lanham Act provision undisputedly “does not involve viewpoint discrimination”.

“Section 1052(c) directs the USPTO to refuse registration of marks that consist of or comprise ‘a name, portrait, or signature identifying a particular living individual except by his written consent’,” said the agency.

It added that whether a particular person’s consent is required depends on “whether the mark would be recognised and understood by the public as identifying the person”.

On this basis, the office argued that if evidence shows that the mark would be so perceived, and if the person has not given written consent to the mark’s registration, the USPTO must refuse registration, “regardless of the viewpoint conveyed by the proposed mark”.

The office’s brief concluded by stating that the Federal Circuit's decision lacked any constitutional basis.

“Because Section 1052(c) does not abridge respondent’s freedom of speech, and because the First Amendment does not confer any right to restrict the speech of his competitors, the court’s as-applied holding has no sound basis in the Constitution,” it said.

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