SWIPLit

USPTO Director Kathi Vidal recently petitioned the Supreme Court to review a Federal Circuit decision in In re Elster. There, the Federal Circuit held the USPTO unconstitutionally applied Lanham Act Section 2(c) (15 U.S.C. § 1052) in refusing to register Elster’s mark that used a living individual’s name, because it impermissibly restricted free speech. Section 2(c) prohibits registration of any mark that consists of “a name, portrait, or signature identifying a particular living individual except by his written consent . . . .”

Vidal’s petition urges the Supreme Court to consider the larger question of whether the Section 2(c) bar is a restriction on speech (subject to higher scrutiny) or a condition of a government benefit (subject to lower scrutiny). The petition argues that recent Supreme Court cases Matal v. Tam and Iancu v. Brunetti left this question unanswered in holding Section 2’s viewpoint-based prohibitions on disparaging, immoral, or scandalous marks to be unconstitutional under the First Amendment. Vidal argues those decisions did not reach the constitutionality of viewpoint-neutral bars on registration because they rested on a finding that such prohibitions were unconstitutional viewpoint discrimination. According to Vidal, Section 2(c) does not involve viewpoint discrimination and therefore presents a clean case for deciding whether Section 2’s overall bars to registration constitute a restriction on speech.

There is a question whether Section 2(c) is in fact viewpoint neutral given that it allows the registration of marks consisting of an individual’s name if that individual has granted consent, and that such consent would necessarily be based on viewpoint. See Barker, David, The Lanham Act’s “Living Individual” Restriction & The First Amendment, Bloomberg Law (2022) (“An individual almost certainly would not consent to a derogatory use of her name.”). But Vidal argues this issue is not in dispute and that withholding a trademark registration (a government benefit) is consistent with the First Amendment, even when it is based on the content of one’s speech, if viewpoint neutral.

The petition asks the Court to hold that a Section 2(c) refusal does not restrict speech because the trademark owner can still use the individual’s name “in whatever speech the owner wishes to engage in,” albeit without a federal registration. In fact, Vidal reasons granting a registration under these circumstances would chill speech because trademark law gives courts the authority to stop infringing trademark uses, and “registration serves only to bolster those ‘rights of exclusion.’” On the other hand, the Federal Circuit reasoned refusing registration of a mark based on its subject matter chills speech “anywhere from the Internet to the grocery store,” perhaps because trademark owners might avoid marks that do not receive the full protection of federal trademark laws.

Respondent’s deadline to file a response is March 29, 2023.