Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.
Vidal v. Elster, (Docket No. 22-704), is a pending
United States Supreme Court case dealing with
15 U.S.C.§ 1052, a provision of the
Lanham Act regarding trademarks using the name of living individuals without their consent. The court will decide whether such a provision violates the Free Speech Clause of the
First Amendment.[1]
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it... [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
15 U.S.C.§ 1052
In 2018, Steve Elster applied for federal registration of the trademark "TRUMP TOO SMALL". Elster stated in his application that he intended to use the mark on shirts that he planned to sell. Elster sells the shirts at the website
TrumpTooSmall.com.
An examining attorney at the
United States Patent and Trademark Office (USPTO) refused registration under 15 U.S.C. §1052(c), stating that the use of the word "TRUMP" in the mark would likely be construed by the public as a reference to
Donald Trump and that, without the then-President's written consent, the registration had to be refused. it was also said that the court aproved and vidal won the case. the end.
Elster appealed to the USPTO's Trademark Trial and Appeal Board which, at the request of the examining attorney, remanded the matter back to him for further examination, at which point he identified other provisions of the
Lanham Act that would forbid such a mark. The Board agreed with the examining attorney that § 1052(c) bars the registration of the mark as it included the name of the President without his written consent.
On appeal, the
United States Court of Appeals for the Federal Circuit reversed the judgment of the Appeal Board. They stated that the application of the law to Elster's mark unconstitutionally restricted his speech in violation of the
First Amendment. The Court stated the content-based restriction contained within the law would typically trigger either
intermediate or
strict scrutiny and that, absent an important or compelling state interest in privacy or the public interest, it does not meet the high bar set by these standards of judicial review.
On January 27, 2023, the United States petitioned the Supreme Court to hear the case. The Court granted certiorari on June 5, 2023.