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.