INTA files amicus brief on “TRUMP TOO SMALL” free speech challenge to Lanham Act

New York, New York —September 13, 2023—The International Trademark Association (INTA) has filed an amicus brief with the United States Supreme Court in Vidal v. Elster, No. 22-704, a case considering whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the free speech clause of the First Amendment when the mark contains criticism of a government official or public figure. Section 1052(c) of the Lanham Act requires consent to name a living individual in a registered trademark—in this case then-President Donald Trump.

In this case, respondent Steve Elster sought to register the mark TRUMP TOO SMALL based on an intent to use the mark on t-shirts. The United States Patent and Trademark Office (USPTO) refused registration of the mark under Section 1052(c). Mr. Elster appealed the USPTO’s refusal to the Trademark Trial and Appeal Board, which affirmed the refusal to register, recognizing that the purpose of Section 1052(c) is to align trademark law with the right of publicity a person has in their name. The U.S. Court of Appeals for the Federal Circuit reversed the refusal, holding that the application of Section 1052(c) to bar registration of the mark “unconstitutionally restricts free speech in violation of the First Amendment.” The government sought review by the US Supreme Court. 

The case is significant because it addresses whether a “Lanham Act bar” on the registration of a trademark is an impermissible restriction on speech. The Supreme Court has recently considered other Lanham Act bars on registration in Matal v. Tam, 582 US 218 (2017) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019), but in both of those cases, the statutory provision was viewpoint based. Unlike the statutory bars in Tam and Brunetti, the statutory bar in Section 1052(c) is viewpoint neutral, thus this case addresses a question left unresolved by the Court’s prior decisions.  

INTA filed a brief in support of USPTO arguing that Section 1052(c) should survive the constitutional challenge for four principal reasons: 1) the statute does not create any significant or undue restriction on speech because a trademark owner does not need a registration to engage in speech; 2) the provision is viewpoint neutral and therefore distinguishable from the provisions struck down in the Supreme Court’s recent Tam and Brunetti cases; 3) Congress has a substantial interest in regulating registration of trademarks that appropriate and trade upon the names and associated publicity rights of recognized individuals; and 4) refusals under Section 1052(c) permit more speech, not less, because they deny the owner the presumptive right to exclude third parties from using the claimed mark. 

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