Last week the United States Patent and Trademark Office (USPTO) suspended all trademark applications involving marks subject to refusal under 15 U.S.C. § 1052(c) (or “section 2(c)”) that are critical of government officials or public figures. This comes after the United States Court of Appeals for the Federal Circuit in In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022) recently held that section 2(c) is unconstitutional when applied to trademarks that are critical of the government or governmental officials. The USPTO filed an appeal with the United States Supreme Court and suspended all applications related to section 2(c).

Section 2(c) states: “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 . . . Consists 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.” In other words, marks that use the name of a living person cannot be registered without the consent of the individual whose name is being trademarked. The rationale behind this prohibition is that using the name of a living person to identify the source of goods or services without that person’s consent per se creates a false association and/or endorsement of the goods or services by that named person.

That provision is now under judicial scrutiny because of its implications for free speech, particularly political speech, which is the most protected type of speech in the United States. In Elster, the Federal Circuit found that denying trademark protection for the mark TRUMP TOO SMALL, which it considered to be arguably critical of an American political figure, was unconstitutional where such a denial could chill critical speech of elected (or formerly elected) officials. The Federal Circuit wrote: “the First Amendment has its fullest and most urgent application to speech concerning public officials. Laws suppressing the right to praise or criticize governmental agents generally cannot be squared with the First Amendment.” Elster, 26 F.4^th at 1334. The Federal Circuit was not persuaded by the fact that denial of federal trademark registration does not prevent the applicant from using its mark. According to the court, the denial of valuable government-provided benefits is enough to chill highly protected speech.

Now the Supreme Court may hear and weigh in on this issue. This decision comes on the heels of the Supreme Court’s decision in In re Tam, where the Court held that a similar provision in the Lanham Act, which allowed the USPTO to reject marks that were disparaging to a group of people, was unconstitutional as a chill on free speech. Commentators and trademark attorneys were concerned that the Tam decision would open the door to other attacks on the Lanham Act, and they appear to have been right.

The Supreme Court’s Ruling in Vidal v. Elster

The Supreme Court resolved this constitutional question in Vidal v. Elster, 602 U.S. 286 (2024). In a unanimous opinion by Justice Thomas, the Court reversed the Federal Circuit and held that Section 2(c) of the Lanham Act — the provision that prohibits registering marks that identify a living person without their consent — does not violate the First Amendment even when applied to marks critical of public figures.

The Court’s reasoning focused on the historical tradition of restricting trademark registrations that leverage another person’s name. The Court distinguished the Section 2(c) restriction from the viewpoint-based restrictions it had previously struck down in Matal v. Tam, 582 U.S. 218 (2017) (disparagement clause) and Iancu v. Brunetti, 588 U.S. 388 (2019) (immoral or scandalous clause). Unlike those provisions, which discriminated based on viewpoint, Section 2(c) is viewpoint-neutral: it prohibits registration of marks using any living person’s name without consent, whether the mark praises or criticizes them.

What Vidal v. Elster Means for Trademark Applicants

The practical consequence of Vidal is that the USPTO’s suspension of Section 2(c) applications has been lifted, and those applications are subject to standard examination. Applicants who sought to register marks incorporating the names of living public figures without consent — including politicians, celebrities, and business leaders — will face refusal under Section 2(c) unless they obtain written consent from the named individual. This applies even if the mark is clearly intended as political commentary or criticism.

The Court’s ruling did not address whether the First Amendment limits other trademark registration restrictions or whether there might be narrower as-applied challenges in specific cases. But for mainstream trademark practice, the rule is clear: incorporating a living person’s name into a trademark without written consent will result in a Section 2(c) refusal.

The Broader First Amendment Landscape in Trademark Law

The Elster litigation is part of a broader line of cases examining the intersection of trademark registration and the First Amendment. The trajectory of these cases reflects an ongoing tension between the government’s interest in regulating commercial speech through the trademark system and First Amendment protections for expressive content that appears on commercial goods.

Following Tam and Brunetti, the USPTO eliminated several long-standing registration refusals that were found to impose viewpoint-based restrictions. Vidal drew the line at consent-based restrictions that are neutral as to viewpoint. The result is a First Amendment framework for trademark registration that prohibits viewpoint discrimination but permits restrictions that protect the right of publicity and prevent false endorsement.

For applicants navigating these restrictions, understanding the current state of First Amendment trademark law is essential before filing. Whether you are seeking to register a mark involving a person’s name or navigating a Section 2(c) office action refusal, the trademark attorneys at Revision Legal can advise you. Contact us at 231-714-0100 or 855-473-8474.