When a trademark consists of the name or likeness of a particular living individual, or a deceased president of the United States during the life of his widow, then that mark can be registered only with their written consent. 15 U.S.C. §1052(c); see also T.M.E.P. 813. Consent may be presumed where the individual whose name or likeness appears in the mark personally signs the application.  See T.M.E.P. 1206.04(b).

The intersection of political speech and consent under trademark law was recently addressed by the Federal Circuit in In re Elster, No. 20-2205 (Fed. Cir. Feb. 23, 2022), where Mr. Elster sought to register the phrase “TRUMP TOO SMALL” for shirts. Mr. Elster sought to invoke a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aimed to “convey[ ] that some features of President Trump and his policies are diminutive.”

Mr. Elster's trademark application was refused because the applied-for mark used Trump's name without his consent under 15 U.S.C. § 1052(c) (“a name . . . identifying a particular living individual”), and also created a false association under 15 U.S.C. § 1052(c) (“falsely suggest a connection with persons, living or dead”).

The Trademark Trial and Appeal Board (“TTAB”) later held that the refusals were not an unconstitutional restriction on free speech. Moreover, the trademark statutes at issue were narrowly tailored to advance the compelling government interests of protecting an individual's right of privacy and publicity, and protecting consumers against source deception.

On appeal to the Federal Circuit, the Court held that the particular facts of this case under § 1052(c) involves content-based discrimination that is not justified by either a compelling or substantial government interest. “The question here is whether the government has an interest in limiting speech on privacy or publicity grounds if that speech involves criticism of government officials—speech that is otherwise at the heart of the First Amendment.”

With respect to the right of privacy, the Court held “there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice.” Thus, “privacy concerns give way when balanced against the interest in publishing matters of public importance,” citing Bartnicki v. Vopper, 532 U.S. 514, 534 (2001).

With respect to the right of publicity, the Court noted the asserted interest “is more complex.” While the government “has an interest in preventing the issuance of marks that falsely suggest that in individual, including the President, has endorsed a particular product or service,” the Court found “that is not the situation here.”  There was no plausible claim of false endorsement made in this case.

The right of publicity does not support a government restriction on the use of a mark because the mark is critical of a public official without his or her consent.

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The government has no valid publicity interest that could overcome the First Amendment protections afforded the political criticism embodied in Elster's mark.

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The PTO's refusal to register Elster's mark cannot be sustained because the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice, which is not alleged here.

The Court further noted that because Mr. Elster only raised “an as-applied challenge,” it would not decide whether the statute was constitutionally overbroad; but that 15 U.S.C. §1052(c) nonetheless “raises concerns regarding overbreadth” which may be “for another day.”

While expressive speech is not entitled to a lesser degree of protection because it is printed on a T-shirt; words printed on a T-shirt are not automatically entitled to trademark protection because those words may just be ornamental—where most purchasers would perceive the words merely as decoration on the goods. In re Olin Corp., 181 USPQ 182, 182 (TTAB 1973) (phrase “Swallow Your Leader” on the front of a t-shirt was merely ornamental and did not show trademark use); In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (finding the words “‘I LOVE YOU” on bracelet to be ornamental).

How the mark is presented on goods such as clothing could be important in determining whether it is being used as a trademark. A small, neat, and discrete wording/design located on the pocket of a garment may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods. However, the size of the mark on clothing is only one consideration in determining the registrability of a mark; and a small, neat, and discrete word or design feature will not necessarily be perceived as a mark in all cases. In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); see also T.M.E.P. 1202.03.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

UPDATE (June 6, 2023): The U.S. Supreme Court on June 5, 2023, granted certiorari to review this decision. Vidal v. Elster, No. 22-704. The USPTO's certiorari petition sought review over the question of “whether a Lanham Act bar” on the registration of a trademark is “a condition on a government benefit or a simple restriction on speech.”