In This Edition
- Bob Kenney Begins Tenure as Head of WilSav IP Group
- Vidal v. Elster | Free speech is Trumped by the names clause
- Mountain Gateway Order, Inc. v. Virginia Community College System | The Trademark Board ruled that, as trademark applicants, States have no sovereign immunity
- Watch Webinar Recording | Copyright & Trademark Basics: Shields to Protect Your Brand
Bob Kenney Begins Tenure as Head of WilSav IP Group
Bob has more than 35 years of experience in intellectual property legal matters including trademark clearance, prosecution, counseling and portfolio management and patent, trademark and copyright litigation. Bob has helped clients in a broad range of fields acquire, protect and profit from their important intellectual property rights as well as teaming with clients for licensing and intellectual property acquisition. He is particularly focused on helping clients build and protect their valuable brands.
See Bob's Bio to learn more.
Trump Too Small: The Lanham Act Names Clause
At the Intersection Trademark Law and Free Speech
THE LANHAM ACT NAMES CLAUSE
To guide potential trademark owners and to foster strong protection for trademarks under U.S. law, the Lanham Act; 15 U.S.C. §1052, defines the types of trademarks and service which marks can be registered by whittling away those that are statutorily barred from registration. Among these exclusions from registration are immoral or scandalous marks and disparaging marks (§1052(a)), and marks consisting of or comprising the name, portrait or signature identifying a particular living individual except by his written consent (§1052(c)).
Restrictions on the registration of marks which fall under these prohibitions have been tested in recent years in cases decided by the U.S. Supreme Court, as they have the strong potential to violate the U.S. Constitution’s First Amendment which states that Congress “shall make no law…abridging freedom of speech.”
First up in 2017 was the Court’s decision in Metal v. Tam, 582 U.S. 218 (2017), in which the Court found the Lanham Act’s bar to registration of disparaging trademarks unconstitutional. This was followed in 2019 by the decision in Iancu v. Brunetti 588 U.S. 388 (2109) with the decision that a bar on the registration of “immoral or scandalous” marks was likewise unconstitutional.
This set the stage for the Court’s consideration of the issue in Vidal v. Elster 602 U.S. 286 (2024), in which the “names clause” of §1052(c) took its turn squaring off against the constitutional right to free speech.
In Vidal, a California lawyer named Steve Elster filed a federal trademark application for the mark TRUMP TOO SMALL for use on shirts, such as the one pictured (right).
FACT PATTERN
Elster chose the TRUMP TOO SMALL mark to “invoke[e] a memorable exchange between then President Donald Trump and Senator Marco Rubio from a 2016 presidential primary debate” and to “criticize” former President Trump.
Elster’s application was refused registration on the grounds that it violated the names clause, which prohibits registration of a mark that uses a living person’s name without their consent.
He appealed the examining attorney’s decision to the U.S. Trademark Trial and Appeal Board (TTAB), arguing the refusal violated his First Amendment rights because it prevented him from criticizing a public figure, which was a viewpoint-based restriction of free speech, similarly to that in Tam and Brunetti. The TTAB affirmed the decision of the examining attorney and held the refusal to register the mark under the names clause did not violate his First Amendment rights.
On appeal, the United States Court of Appeals for the Federal Circuit (CAFC), reversed, finding the Section 2(c) names clause violates the First Amendment and rejecting the government’s argument that the clause serves the substantial interest in protecting individuals’ privacy and publicity rights by prohibiting the trademarked speech.
THE SUPREME COURT DECISION
In a unanimous 9-0 decision, the Supreme Court held the names clause does not violate the First Amendment and was therefore, constitutional. Not so unanimous was the way the Justices reached that conclusion. Nevertheless, there was 9-0 agreement on a number of fundamental issues.
The court outlined the steps for enforcing the First Amendment’s prohibition against abridging the freedom of speech, starting with “distinguish[ing] between content-based and content-neutral regulations of speech.” A content-based regulation “target[s] speech based on its communicative content” and is presumed to be unconstitutional. “Viewpoint discrimination is a particularly ‘egregious form of content discrimination’ that targets not merely subject matter ‘but particular views taken by speakers on the subject…” a right that is at the foundation of the First Amendment.
It was because the speech considered in Tam and Brunetti were “viewpoint based,” namely, expressing a viewpoint (whether popular or not) of the “disparaging,” or “immoral or scandalous” marks, that they were protected under the First Amendment.
As for the names clause, the Court found that because it does not single out a trademark based on the specific motivating ideology or the opinion or perspective of the speaker, it does not “facially discriminate against any viewpoint.”
Writing for the majority, Justice Thomas stated:
“The names clause does not facially discriminate against any viewpoint. No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent. It does not matter ‘whether the use of [the] name is flattering, critical or neutral.’”
The decision further stated:
“The Government is thus not singling out a trademark ‘based on the specific motivating ideology or the opinion or perspective of the speaker.”
Elster argued the names clause restriction nevertheless operates as a free speech restriction in practice because “it is easier to obtain consent for a trademark that flatters a person rather than mocks him.”
The Court acknowledged that while a law can discriminate based on viewpoint in its practical operation, in this situation “there are many reasons why a person may be unable to secure another’s consent to register a trademark bearing his name. Even when the trademark’s message is neutral or complementary, a person may withhold consent to avoid any association with the goods, or to prevent his name from being exploited for another’s gain.”
In sum, the names clause does not violate the First Amendment because it prohibits registration of any trademark containing a living person’s name without consent, regardless of who the subject of the mark is, or whether it reflects negatively or positively about that individual. It cannot therefore be “viewpoint-based.”
As noted above, while the decision in Vidal was unanimous, the routes taken by the respective Justices to reach that decision were quite divided.
The majority leaned on the historical application of the names clause, grounded in the notion that a person has exclusive ownership of his or her name.
One concurring opinion drafted by Justice Cavanaugh, and joined by Justice Roberts, agreed with all but one point of the decision noting the Court could deal with future cases relating to viewpoint neutral, content-based trademark restrictions as they arise.
Finally, Justice Barrett, joined by Justice Kagan and joined in part by Justices Sotomayor and Jackson disagreed with the majority application of the history of the name clause to suggesting that “as long as they are reasonable in light of the trademark system’s purpose of facilitating source identification,” content-based restrictions should be permitted.
TAKEAWAY
While upholding the constitutionality of the names clause, the decision in Vidal does not really offer a broader roadmap for future cases in which viewpoint neutral, content-based restrictions are scrutinized for their constitutional validity. Those types of restrictions are therefore left to be addressed as they arise in the future.
Trademark Board Finds No Sovereign Immunity to Opposition Proceeding
The Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) ruled that a state agency has no sovereign immunity to a trademark opposition proceeding. Mountain Gateway Order, Inc. v. Virginia Community College System, Opposition Nos. 91283412 (parent) and 91283416 (TTAB June 6, 2024) [precedential].
FACT PATTERN
Mountain Gateway Order (“MGO”), owner of the trademarks MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY, opposed two applications of the Virginia Community College System (“VCCS”) to register the mark MOUNTAIN GATEWAY COMMUNITY COLLEGE for use with clothing in Class 25 and educational services in Class 41. MGO based its oppositions on alleged likelihood of confusion, dilution by blurring, and lack of a bona fide intent to use the mark in commerce. VCCS filed motions to dismiss each opposition on the grounds that the TTAB lacked subject-matter jurisdiction under the doctrine of state sovereign immunity and that the notices of opposition failed to state a claim upon which relief could be granted.
THE DECISION
The TTAB acknowledged that “state sovereign immunity may be asserted when ‘a private party [] haul[s] a State in front of . . . an administrative tribunal’ within a federal agency in an adversarial proceeding bearing strong similarities to civil litigation” (citing Federal Maritime Commission v. South Carolina State Ports Authority, 535 U.S. 743, 760 n.11) (2002)). But, the TTAB said, “States may not assert sovereign immunity where a federal agency exercises its superior sovereignty in agency enforcement actions instituted upon information supplied by a private party to ensure State compliance with federal law” (citation omitted).
The TTAB noted that state educational entities had appeared before it on several occasions and that in this case a state agency was appearing in the role of a trademark applicant. Section 45 of the Trademark Act, 15 U.S.C. § 1127, expressly provides that states and their instrumentalities are “subject to [U.S. trademark law] in the same manner and to the same extent as any nongovernmental entity.”
Thus, the TTAB said, “[T]he Trademark Act is clear that States may apply for trademarks and that States that apply are subject to the same registration provisions of the Trademark Act as any other applicant, including that a State’s application is subject to opposition proceedings” (citing Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rule 2.116(b)). Moreover, the TTAB said, because “opposition proceedings involve solely an applicant’s right to register as demonstrated by the limitation of available claims and defenses to a resolution of the question of registrability,” if “state entities such as Applicant were not subject to opposition proceedings, the USPTO would be precluded from exercising ‘ample means of ensuring that [States] comply with the [Trademark] Act and other valid federal rules governing [trademark registrability]’” (citing Federal Maritime Commission, 535 U.S. at 768).
The TTAB concluded that VCCS’s status as a juristic person under the Trademark Act and the public interest in the integrity of the trademark registration system, “dictate that Applicant is subject to opposition proceedings and that sovereign immunity does not apply to opposition proceedings.” Accordingly, the TTAB dismissed VCCS’s motions to dismiss on the ground of sovereign immunity.
THE TAKAWAY
The TTAB made short work of VCCS’s motions to dismiss for failure to state a claim upon which relief could be granted. The TTAB held that, by pointing to its rights in its MOUNTAIN GATEWAY trademarks, MGO had adequately pleaded that it was entitled to a statutory cause of action. The TTAB also held that MGO had adequately pleaded that VCCS’s mark was likely to cause confusion with MGO’s preexisting marks and that VCCS’s MOUNTAIN GATEWAY mark was likely to dilute the distinctive quality of MGO’s MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY marks. Thus, the TTAB dismissed VCCS’s motions for failure to state a claim.
WEBINAR RECORDING
COPYRIGHT & TRADEMARK BASICS: Shields to Protect Your Brands
Presented on April 9, 2024, by IP attorneys Tim Lockhart and Bob Kenney, this session focuses on the essential principles of copyright protection, including tips on contract drafting and default copyright ownership, and those of trademark registration, maintenance, and renewal.
Placing particular emphasis on the importance of brand selection, building, and enforcement, the information provided in this session will be useful to business owners and senior managers who need to have a working knowledge of what to do—and what to avoid—with respect to copyright and trademark basics.