Following on from Matal v. Tam striking down the prohibition on the registration of trademarks containing derogatory terms and phrases (in that case, THE SLANTS) and Iancu v. Brunetti striking down the prohibition on the immoral and scandalous matter (in that case, FUCT) on the basis of the First Amendment right to freedom of speech, the Federal Circuit has struck another long-standing limit on what trademarks can be registered. In re Steve Elster, decided February 24, 2022, does not go so far as to strike down the existing limitation on registering a trademark including a living person’s name without their permission, but does substantially limit it.

Appeal to the Federal Circuit

In January 2018, Steve Elster filed an application to register TRUMP TOO SMALL as a trademark for various kinds of shirts. The U.S. Patent and Trademark Office (“USPTO”) refused to register the mark on the bases that (a) it included a living person’s name (Donald Trump’s) without their permission and (b) it falsely suggests an association with a person (again, Donald Trump). Elster appealed the decision and, after losing that appeal before the Trademark Trial and Appeal Board, appealed again to the Court of Appeals for the Federal Circuit. That Court, weighing Mr. Trump’s privacy, publicity, and commercial rights in his name against Mr. Elster’s free speech rights to criticize a public figure, found for Mr. Esler.

The Federal Circuit’s decision allows anyone to register trademarks, including the names of political figures. While the Federal Circuit did not strike all of Section 2(c) of the Trademark Act, it made clear that, if the statute does not permit registration of marks that “advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests,” it may be unconstitutional altogether. It remains to be seen whether this ruling opens the door to the registration of marks using the names or likenesses of public, but not political, figures without their permission. Would BEEONCE for honey-flavored candy be a parody of Beyonce or trading on her name?

First Amendment concerns

As First Amendment concerns open up new areas of trademark registration, we are sure to see more changes. Notably, Mr. Trump was not involved in this refusal, and the Federal Circuit’s decision hinges on the U.S. Patent and Trademark Office’s actions as a government agency, not on any right asserted by Mr. Trump in an opposition or lawsuit. Had he been a party asserting his commercial interests as a private citizen, the result may have been different.