The United States Patent and Trademark office has suspended action on trademark applications targeting the names of public figures. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Scott:

I’m Scott Hervey with Weintraub Tobin.

Josh:

I’m Josh Escovedo with Weintraub Tobin. The USPTO has suspended action on trademark application trying to take advantage of a new appellate decision that would let people license trademarks that poke fun at the names of living people. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog.

Josh:

Scott, have you heard about the recent guidance issued by the US Patent and Trademark Office on trademarks that make fun of living public figures?

Scott:

I have, but why don’t you tell our listeners what’s going on.

Josh:

Well, the USPTO has announced that its suspending action on any trademark applications that try to take advantage of a new appeals court ruling that potentially allows people to license trademarks that make fun of the names of living figures like former President Donald Trump. The Trademark Office has indicated that it will continue to do so while it waits for the US Supreme Court to weigh in.

Scott:

Right, and according to the one-page document issued by the Trademark Office, its examiners will not look at trademarks that cover phrases “that are critical of government officials or public figures,” in line with the agency’s longstanding rules. This is because of Section 2(c) of the Lanham Act, which bans the issuance of trademarks that include names “identifying a particular individual” without their consent.

Josh:

You might be wondering what led to the issuance of this guidance. Well, last year, lawyer Steve Elster was trying to land a trademark protecting his use of the phrase “Trump Too Small” for use on T-shirts. Both the office and its own appeals body, the Trademark Trial and Appeal Board, had refused to register the mark, citing the Office’s long-standing rules. But Elster then appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that “the government has no legitimate interest in protecting the privacy of President Trump.”

Scott:

Right, I remember hearing about that last February.

Josh:

Yes, Elster argued that the phrase was “political criticism,” and accordingly to Judge Dyk, it is therefore protected by the First Amendment. The USPTO appealed to matter to the Supreme Court. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided.

Scott:

The Trademark Offices argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent’s — not the refusal to register them — that would ‘chill’ such speech.”

Josh:

So, for now, the Trademark Office has said that it won’t take any action on trademark applications that are trying to take advantage of Judge Dyk’s decision until the Supreme Court weighs in. It’s unclear how many applications this will impact, as the Office has declined to comment on its decision. One has to wonder, what the Trademark Office will do if the Supreme Court refuses to grant cert like it often does.

Scott:

That is an interesting question, Josh, and even if the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, wouldn’t such a decision mean that the trademark examiners will have to make decision about a particular trademark expresses protectible speech under the First Amendment? That isn’t the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue. Thanks for breaking it down for us, Josh.

Josh:

No problem, Scott. Thank you to everyone who joined us.