Iancu v. Brunetti

17 Analyses of this case by attorneys

  1. Scandalous Marks? Nothing the Proverbial Bar of Soap Can’t Fix

    Drinker Biddle & Reath LLPJune 29, 2019

    The United States Patent and Trademark Office (USPTO) refused to register the mark under Section 2(a) of the Lanham Act, finding it comprised immoral or scandalous matter in violation of that section.Writing for the majority, Justice Kagan noted that the statute “does not draw the line at lewd, sexually explicit, or profane marks” but that it actually “covers the universe of immoral or scandalous . . . material.” Iancu v. Brunetti, 588 U.S. __, __ (2019) (opinion of the Court) (slip op., at 9). She further noted that “a law disfavoring ‘ideas that offend’ discriminates based on viewpoint in violation of the First Amendment.”

  2. Does TRUMP Trademark Ruling Create First Amendment Exception That Is TOO BIG or TOO SMALL?

    Epstein Becker & GreenMarch 4, 2022

    Elster appealed to CAFC.In reaching its conclusion that the denial of the mark did violate Elster’s First Amendment rights, the CAFC made three necessary findings.First, the CAFC definitively concluded that a trademark is private speech entitled to First Amendment protection. In so finding, the CAFC relied upon prior Supreme Court precedent that challenged the constitutionality of the related Section 2(a) of the Lanham Act on free speech grounds—Matal v. Tam, S. Ct. 1744 (2017) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019). Tam and Brunetti establish that a trademark represents “private, not government, speech” entitled to some form of First Amendment protection.

  3. How Big a Deal Is “Trump Too Small”? – SCOTUS Today

    Epstein Becker & GreenJune 19, 2023

    ith an ® designation and that the applicant cannot prevent others of like mind from saying it based on a federal registration. While a registration of a such mark might make saying the phrase more financially lucrative, denial of a federal registration is not the equivalent of taxing speech, at least according to the Government.The second issue that the Government raised relates to its assertion that the case presents a question that was left open in prior cases before the Supreme Court as to whether a Lanham Act bar on the registration of a trademark is a condition on a government benefit or a simple restriction on speech. (Id. at p. 11). Given the succinct nature of the Court’s statement of the issue presented, the extent to which, if at all, the Court will deal with this nuance is unclear. But the potential for its clear resolution is signaled by the fact that this issue was left open in two previous cases before the Court, Matal v. Tam, 137 S. Ct. 1744 (2017) andIancu v. Brunetti, 139 S. Ct. 2294 (2019). In Tam, the Court granted review of a Federal Circuit decision that had invalidated the Lanham Act’s bar on the registration of “disparag[ing]” marks. 15 U.S.C. 1052(a); seeTam, 137 S. Ct. at 1755. And in Brunetti, the Court granted review of a Federal Circuit decision that had invalidated the Lanham Act’s bar on the registration of “immoral” or “scandalous” marks. 15 U.S.C. 1052(a); seeBrunetti, 139 S. Ct. at 2298.Elster’s Brief in Opposition to Petition for Writ of Certiorari (the “Opposition Brief”), not surprisingly, argued the opposite: that the Court should deny the petition because this narrow, as-applied challenge satisfies none of the Court’s traditional criteria for certiorari under Supreme Court Rule 10. (Opposition Brief at p. 2). Elster likewise argued that this is not a case in which the Court should determine the overall constitutionality of Section 1052(c), because the CAFC did not invalidate the statute itself, rather it invalidated the USPTO’s decision to refuse reg

  4. Supreme Court Weighs Whether Refusing to Register TRUMP TOO SMALL Trademark Violates First Amendment

    Pillsbury - Internet & Social Media Law BlogJon JekelNovember 7, 2023

    ersial public figure as President Trump amounted to a violation of the free speech clause of the First Amendment.The application went through several more rounds of refusals from the USPTO examiner and corresponding responses from Elster. In 2019, Elster appealed the repeated refusals to register to the USPTO’s Trademark Trial and Appeal Board (TTAB). As is common, the TTAB upheld the denial of registration, finding the Name Clause was viewpoint neutral. It therefore concluded that Section 1052(c) was consistent with the First Amendment, and the refusal was proper.Elster appealed the TTAB’s ruling to the Court of Appeals for the Federal Circuit. Citing other recent Supreme Court rulings concerning the First Amendment and trademarks, it found Section 1052(c) unconstitutional as applied to the TRUMP TOO SMALL trademark, reversing the TTAB’s decision. (See In re: Steve Elster, Case No. 20-2205 (Fed. Cir. Feb. 24, 2022) (citing Matal v. Tam, 582 U.S. 218 (2017) (“Tam”); Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (“Brunetti”)).Examining the TRUMP TOO SMALL mark, the Federal Circuit found that prohibiting a registration would impair Elster’s right to criticize a government official, which it considered a core purpose of the First Amendment. While stopping short of declaring Section 1052(c) invalid, it would require the USPTO to evaluate each trademark application with the name of a living individual on a case-by-case basis. If it involved a public figure, refusing registration would violate the First Amendment; if not, a refusal would be proper.The USPTO asked the Supreme Court to intervene. It framed the Name Clause in Section 1052(c) not as a restrictionon speech, but rather, as a condition on a federalbenefit. It observed that even if Elster could not register the TRUMP TOO SMALL mark, he could still sell T-shirts and other products with that slogan. The condition to the federal benefit—i.e., a registration providing enhanced mechanisms for restricting the speech of his competitors—was eithe

  5. Could Trump Too Small Shrink Free Speech Rights In The Trademark Application Process?

    Dunlap Bennett & Ludwig PLLCAlex ButtermanOctober 12, 2023

    Amendment expressions before they occur.”Why a case about little hands could be huge.This is the third time in about the last five years that the Supreme Court is being asked to consider whether the Lanham Act, initially intended to regulate commercial speech, prevent unfair competition, and protect consumer rights, can restrict First Amendment free speech rights. Crucially, the decision in Elster could potentially narrow the application of the two previous cases and severely restrict their applicability to other sections of the Lanham Act.In the two previous cases, the Supreme Court determined that the restrictions were unconstitutional restraints of free speech under Section 2(a) of the Act. In 2017, in Matal v. Tam (582 U.S. 218, 137 S. Ct. 1744, 198 L. Ed. 2d 366, 137 S. Ct. 1744 (2017)), the Court determined that the Act’s ban on the registration of marks that may disparage entire groups of people was an Unconstitutional restriction of free speech. In 20019, in Iancu v. Brunetti (204 L. Ed. 2d 714, 139 S. Ct. 2294 (2019)), the Court determined that the ban on the registration of material that is considered profane or lewd was unconstitutional.Both of these cases established that the USPTO’s refusal of an application could disfavor certain speech based strictly on its content without showing a compelling government interest, and could, therefore, violate the First Amendment despite arguably being commercial speech .Tam and Brunetti were the first cases to recognize that the Lanham Act could unconstitutionally restrict free speech rights, but they concerned viewpoint-based restrictions under Section 2(a) of the Lanham Act. Elster concerns the Constitutionality of Section 2(c)’s content-based restrictions based upon state-law privacy and publicity rights when the content identifies political public figures. The CAFC did recognize that the Supreme Court’s decisions in Tam and Brunetti were narrowly tailored and did not reach the constitutionality of Section 2(c) but determined that “… as applied in

  6. Make Your Mark On History: Connecting Tradenames To Landmark Events, People & Places

    International Lawyers NetworkJames FlynnJune 21, 2023

    y to historical trademarks:Historical trademarks are trademarks about an event or person from history. A trademark using a name, portrait or signature associated with a living person may be rejected. Generally, the Trademark Office will not allow a mark associated with a living person without permission. However, historical trademarks involving non-living individuals do not require permission.[Historical Trademarks are Good for Strong Branding (2020)]But, interestingly, the United States Supreme Court recently granted review in Vidal v. Elster, Case 22-704, which calls into question the prohibition under 15 U.S.C. § 1052(c) on registering marks concerning a living person without permission; this case has the possibility of altering trademark law significantly and allowing current events to be treated similarly to historic events from a trademark perspective. It also intersects with several recent Supreme Court decisions, such as Matal v. Tam, 137 S. Ct. 1744 (2017), Iancu v. Brunetti, 139 S. Ct. 2294 (2019), and even Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 599 U.S. ____ (2023), and the First Amendment, as I and some colleagues recently described.As I wrote at the time of the Circuit Court’s decision, this “will be an issue to watch moving forward.” Vidalpresents the question of whether the refusal to register a mark under 15 U.S.C. §1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a living government official or public figure. Since history is made every day, this is an example of our issue concerning historic figures coming into present relief. Somewhat surprisingly, the briefing to date has been fairly limited, amounting to the cert. petition, one amicus filing, the opposition to certiorari, and a reply, each one a short document by Court standards. (None exceeding 27 pages, and recent IP cases such as Jack Daniel’s Properties, Inc., v. VIP Products LLC, Docket No. 22-148, saw over 30 amicus briefs filed, as I discussed in an e

  7. The Federal Circuit Deals Another Blow to the Lanham Act, Finding Section 2(c) Unconstitutional as Applied to a Refusal to Register TRUMP TOO SMALL

    Fox Rothschild LLPMelissa ScottMarch 3, 2022

    In Matal v. Tam, 582 U.S. __, 137 S. Ct. 1744 (2017), the Court struck down the “disparagement” provision of Section 2(a). Then, in Iancu v. Brunetti, 588 U.S. __, 139 S. Ct. 2294 (2019), the Court held the “immoral and scandalous” provision of Section 2(a) unconstitutional. The CAFC recognized that both of the Court’s decisions rested on a “core postulate of free speech law”—that “‘[t]he government may not discriminate against speech based on the ideas or opinions it conveys’” Id., at p. 4.While the CAFC acknowledged that Tam and Brunetti were decided on narrow grounds and did not resolve the question of the constitutionality of Section 2(c) as applied to Elster’s claim, it held that the cases established that a trademark “represents ‘private, not government, speech’ entitled to some form of protection.”

  8. “Trump Too Small” is Too Personal for Trademark Registration

    BakerHostetlerDennis LoomisJuly 14, 2020

    Trump Too Small applicant Elster has publicly announced that he will appeal the board’s decision (in either a new proceeding in the district court or a direct appeal to the Federal Circuit). Stay tuned. 15 U.S.C. §1052(c)Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744 (2017) 15 U.S.C. §1052(a)Iancu v. Brunetti, 588 U.S. __, 139 S.Ct. 2294 (2019) 15 U.S.C. §1052(a). Trademark Trial and Appeal Board decision dated February 11, 2020, in Matters Serial No. 87545258 and Serial No. 87545533

  9. Significant 2019 Trademark Developments

    Tarter Krinsky & Drogin LLPNels LippertMarch 4, 2020

    In Iancu v. Brunetti, 139 S. Ct. 2294, the Supreme Court took another step in dismantling the prohibitions on registration found in Section 2(a) of the Lanham Act by ruling that a ban on "immoral" or "scandalous" trademarks violated the First Amendment of the U.S. Constitution. This decision followed on the heels of the Court's 2017 decision in Matal v. Tam, 137 S. Ct. 1744, that the Lanham Act's prohibition on the registration of "disparaging" trademarks violated the First Amendment.

  10. Supreme Court Ruling Allows Registration of “Scandalous” or “Immoral” Trademarks

    Brownstein Hyatt Farber SchreckMichael RoundsJuly 9, 2019

    Last week, on June 24, 2019, the United States Supreme Court ruled that the Lanham Act’s “immoral or scandalous” bar to trademark registration constitutes viewpoint discrimination in violation of the First Amendment, and thus is unconstitutional. Iancu v. Brunetti, 588 U.S. ____, 2019 USPQ2d 232043 (2019). Previously, under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the U.S. Patent and Trademark Office (PTO) could refuse to register a mark if it found that a “substantial composite of the general public” would find the mark “shocking to sense of truth, decency, or propriety.”