The Board again rejected a constitutional challenge to Section 2(c) of the Trademark Act, while affirming a refusal of TRUMP TOO SMALL for shirts, finding that the mark “comprises the name of President Donald Trump without his written consent.” Applicant Steve Elster argued that the statutory refusal violates his First Amendment rights, but the Board was unmoved. In re Steve Elster, Serial No. 87749230 (July 2, 2020) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Section 2(c): Section 2(c) bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.”

Section 2(c) has been interpreted to mean that when a name appears in a proposed mark, the written consent of the person with that name must be supplied where: (1) the public would reasonably assume a connection between the individual and the goods or services because the individual is so well known; or (2) the individual is publicly connected with the business in which the mark is used. ADCO, 2020 USPQ2d 53786 at *22.

It was undisputed that the proposed mark includes the surname of President Donald J. Trump. Section 2(c) applies in such a situation when the individual is known by that surname alone. Extensive evidence demonstrated that the public understands “Trump” to refer to President Donald J. Trump. Unlike Section 2(a), Section 2(c) applies regardless of whether there is a suggested connection between the individual and the goods. For example, the Board in Hoefflin held that an application to register OBAMA PAJAMA for pajamas, sleepwear and underwear was barred by Section 2(c) even if “the record does not support the conclusion that President Obama is in any way connected with [such goods].” 97 USPQ2d at 1177. [The Board noted that, in any event, the evidence showed that President Trump’s surname has been used as a brand on a wide variety of goods, including shirts].

Accordingly, in applying Section 2(c) in this case, we need not probe for a Section 2(a)-type connection as Applicant suggests, but rather just a showing that the relevant public would recognize the name in the mark as that of a particular living individual. Therefore, we reject Applicant’s contention that under Section 2(c) a “connection” is necessary, but is foreclosed based on the theory that President Trump would not endorse the message allegedly conveyed by TRUMP TOO SMALL.

The Board declined to consider the alternative Section 2(a) refusal.

Constitutional Challenge: Applicant Elster argued that Section 2(a)’s false association provision and Section 2(c)’s particular living individual provision constitute content-based restrictions on private speech, and are therefore subject to strict scrutiny. He claimed that these provisions are “not narrowly tailored to a compelling state interest and cannot be justified, in particular when applied to current or former presidents, or presidential candidates, whom Applicant claims have yielded rights of privacy and publicity by seeking the office.”

The Board discussed this constitutional issue in the recent Adco decision, involving the mark TRUMPIT for utility knives. [TTABlogged here].

As a threshold matter, the Board pointed out that these provisions of the Trademark Act do not control an applicant’s use of a proposed mark, but only set criteria for trademark registration. Id. Therefore, contrary to Applicant’s assertions, Sections 2(a) and 2(c) are not direct restrictions on speech. Id. Next, the Board addressed the viewpoint-neutrality of Section 2(a)’s false association clause and Section 2(c), thereby distinguishing them from Section 2(a)’s disparagement and immoral/scandalous provisions struck down by the Supreme Court as viewpoint-discriminatory. *** Clearly, Section 2(c) differs, in that the prohibition applies in an objective, straightforward way to any proposed mark that consists of or comprises the name of a particular living individual, regardless of the viewpoint conveyed by the proposed mark.

The Board in ADCO further concluded that even if the challenged provisions of Section 2(a) and Section 2(c) were considered as restrictions on speech, they do not violate the First Amendment because “Congress acts well within its authority when it identifies certain types of source-identifiers as being particularly susceptible to deceptive use and enacts restrictions concerning them.” And so, even if strict scrutiny applied, these provisions are narrowly tailored to accomplish the purpose of protecting consumers from deception.

Read comments and post your comment here.

TTABlogger comment: I believe Applicant Elster, who appeared pro se, is an attorney. Let’s see if he takes this case further. Perhaps Section 2(c) is not unconstitutional on its face, but when applied to the facts here, where Elster is mildly criticizing the President, is it constitutional or does it improperly restrict Free Speech?

Text Copyright John L. Welch 2020.