ABSTRACT
Can you register a famous person’s name as your trademark? The Lanham Act seems to say no, and the PTO interprets this to mean, no, never, no matter what. The Federal Circuit says, ‘yes, you can’, at least as applied to marks containing political commentary. 15 USC § 1052(c) provides, in pertinent part, that the PTO must deny federal registration to a trademark if it ‘[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent …’ Earlier this year the Federal Circuit declared this law unconstitutional in violation of the First Amendment, at least as applied to a mark that criticizes defeated former President Donald Trump by announcing, ‘TRUMP TOO SMALL’. Under Supreme Court precedent, the court was undoubtedly correct, and likely should have gone further to declare the provision facially invalid as overbroad. The government now suggests that section 2(c) is necessary to protect free speech, because granting applicants trademarks in political commentary interferes with others seeking to say such things. This fear is unfounded and does not save the constitutionality of the provision. In fact, section 2(c) fails to address the real First Amendment concerns with the Lanham Act: the potential for politicians themselves to monopolize speech critical or complimentary of themselves through trademark registration. Indeed, Section 2(c) results in de facto viewpoint discrimination because it allows politicians to veto marks containing their names that lodge criticism, while registering marks containing their names of which they approve …
Ernst, Samuel, Trump Really Is Too Small: The Right to Trademark Political Commentary (August 29, 2022). Forthcoming, Brooklyn Law Review, volume 88, no 3, 2023.
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