Q2d 195 (Fed. Cir. 2022), that one’s First Amendment right to make social commentary about a public figure trumps (bad pun intended) the Lanham Act. Whether the Supreme Court agrees with the CAFC soon will be determined.How Did We Get Here?As we explained last year:The story begins in 2018, when Steve Elster sought to register the phrase “TRUMP TOO SMALL” for use on shirts. According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to “convey[] that some features of President Trump and his policies are diminutive.” The Patent and Trademark Office (“PTO”) examiner rejected Elster’s proposed mark, concluding that the mark was not registrable because Section 2(c) of the Lanham Act bars registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” 15 U.S.C. § 1052(c). The PTO concluded that the mark was not registrable because it used President Trump’s name without his consent. . . . The PTO simultaneously rejected Elster’s contention that the denial of the registration violated his First Amendment right to free speech.Elster appealed the denial of his application to the Trademark Trial and Appeals Board (the “Board”), raising the same constitutional argument that he has a First Amendment interest in commentary and criticism regarding a political figure. The Board affirmed the examiner’s denial of the mark and concluded that Section 2(c) was not an unconstitutional restriction on free speech. Elster appealed to CAFC.In reaching its conclusion that the denial of the markdidviolate Elster’s First Amendment rights, the CAFC made three essential findings:A trademark is private speech entitled to First Amendment protection.Elster’s First Amendment claim to a “TRUMP TOO SMALL” mark was valid, and “undoubtedly substantial” because the First Amendment is

The Test for Materiality in Determining Whether a Mark Is Geographically Deceptive Requires Deception to a Substantial Portion of Relevant Consumers 08-1369 April 29, 2009 Decision Last Month at the Federal Circuit - May 2009Judges: Rader, Linn, Dyk (author) [Appealed from: TTAB] In In re Spirits International N.V., No. 08-1369 (Fed. Cir. Apr. 29, 2009), the Federal Circuit vacated and remanded a finding by the TTAB that the mark MOSKOVSKAYA was primarily geographically deceptively misdescriptive under 15 U.S.C. § 1052(e)(3). The Court held that the TTAB applied an incorrect standard of materiality because it failed to consider whether the mark would deceive a significant portion of the relevant consuming public.

Notes 1. 137 S. Ct. 1744 (2017). 2. 15 U.S.C. § 1052(a). 3.

[5] 15 U.S.C. § 1064(3) (2012). [6] 15 U.S.C. § 1052(a). [7] 15 U.S.C. § 1052(b)­–(c), (e).

The Mark’s Origin and Court ProgressionDating back to an original application for the mark in 2018, Elster sought to sell t-shirts referring to a remark by Senator Marco Rubio in a 2016 presidential debate which aimed to convey that certain features of President Trump and his policies are diminutive. The United States Patent and Trademark Office (USPTO) rejected Elster’s proposed mark, reasoning that 15 U.S.C. § 1052(c) prevents registration of a mark that:“Consists of or comprises a name… identifying a particular living individual” without the individual’s “written consent.”The proposed mark attempted to use President Trump’s name without his consent, and in accordance with Section 1052(c), the USPTO denied registration. During the application process, Elster argued that the USPTO’s denial violated his First Amendment right to free speech.Elster appealed the decision to the Trademark Trial and Appeals Board (TTAB) with the same constitutional free speech argument under permissible criticism of a political figure. The TTAB affirmed the USPTO denial of the mark stating that 15 U.S.C. § 1052(c) was not an unconstitutional restriction on free speech. Elster then successfully appealed to the Federal Circuit, who determined that:Trademarks are private speech entitled to First Amendment protection.Elster’s claim to the mark was valid and “undoubtedly substantial” because the First Amendment is rooted in th

The United States Patent and Trademark Office Trademark Trial and Appeal Board (the “TTAB”) recently published a precedential decision regarding the treatment of trademarks for wine and spirits and their potential for being “deceptively misdescriptive” pursuant to Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Section 2(a) has three provisions, all of which are relevant to the alcoholic beverage industry.

On Monday, the U.S. Supreme Court issued an opinion in Iancu v. Brunetti, No. 18-302, finding that the Lanham Act prohibition against registration of scandalous or immoral trademarks violates the First Amendment of the U.S. Constitution. The Brunetti decision follows closely behind the Court's 2017 opinion in Matal v. Tam, which struck down the Lanham Act's prohibition of disparaging marks under similar First Amendment grounds.At issue in Brunetti (as in Tam) is 15 U.S.C. § 1052 of the Lanham Act, which defines federally registrable trademarks. Section 1052(a) provides a number of prohibitions to registration: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—(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.At issue in Tam was the "disparagement" prohibition to registration.

Despite the positive intention, the United States Patent and Trademark Office (“USPTO”) denied the trademark application for “The Slants” under a law prohibiting registration of trademarks that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. §1052(a). However, in its recent decision in Matal v. Tam, the United States Supreme Court found that this law violates the Free Speech Clause of the First Amendment of the U.S. Constitution.

In permitting the registration of the “vulgar” term FUCT, the Supreme Court recently extended its 2016 ruling from Matal v. Tam, which allowed the registration of the trademark THE SLANTS for an Asian-American rock band despite objections that the term is disparaging, ruling that prohibitions of speech must be viewpoint-neutral, and not viewpoint-based.In Matal v. Tam, the Supreme Court found the ban of registration of disparaging trademarks under 15 U.S.C. § 1052(a) unconstitutional because the prohibition was content-based (i.e. required a judgment about the content or meaning of a particular trademark) and resulted in a viewpoint-based restraint of free speech. Following the ruling, registration for the mark REDSKINS, previously found to be an unregisterable, disparaging term, was reinstated.

replied, “[T]he answer is no.” She added that there was both a clear rational basis for restricting certain types of trademarks and longstanding precedent for it.Elster argued that the Name Clause was an unconstitutional burden on the right to engage in critical speech about President Trump. In particular, his team argued that Section 1052(c) was unrelated to the purpose of trademark law—i.e., to prevent consumer confusion—and that it was therefore unconstitutional in the context of the TRUMP TOO SMALL mark. As in the Federal Circuit, Elster focused on the Supreme Court’s rulings in Tam and Brunetti, which found restrictions on registering certain words or phrases unconstitutional under the First Amendment.Notably, the parties agreed that—unlike the Supreme Court’s rulings in the Tam and Brunetti cases—Section 1052(c) is viewpoint-neutral. The Brunetti case, for example, concerned an application for the trademark FUCT. There, the issue was subjectivity. Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibited registration of “scandalous” matter. It was the government’s subjective viewpoint that FUCT was offensive and therefore “scandalous” that resulted in the registration being refused.Likewise, in Tam, the subject trademark—THE SLANTS—consisted of a derogatory term for Asians. The mark was refused registration under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which in relevant part, prohibited the registration of “disparag[ing]” words or phrases as trademarks. Whether it could be registered depended on a subjective viewpoint—i.e., whether the phrase THE SLANTS was disparaging. Further distinguishing that case, the applicant was an Asian-American band seeking to use THE SLANTS as its official band name and reclaim ownership over the derogatory term. There was an argument that, to express themselves fully and effectively, they needed to have THE SLANTS as the official band name, with the benefits of federal protection. There was also real expressive value in choosing t