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University of Miami Law Review

Abstract

For decades, courts have struggled with balancing trademark law with the First Amendment—specifically with cases challenging the denial of trademark registration of certain marks. Congress codified trademark registration through the Lanham Act, also known as the Trademark Act of 1946. This statute outlines the registration process and expands the rights of trademark owners. In recent years, a string of cases have ruled certain provisions of the Lanham Act that bar certain marks from registration unconstitutional.

Currently under review by the Supreme Court, the case Vidal v. Elster involves an applicant who was denied trademark registration for his mark “Trump Too Small” for use on t-shirts. After submitting his registration application, the United States Patent and Trademark Office (“USPTO”) denied registration of the mark and explained that it was barred by the “living individual” clause of Section 2(c) of the Lanham Act. This clause prevents registration of marks that contain the name of a living individual without that individual’s consent. Elster did not have Trump’s consent to use his name. On appeal, the Federal Circuit Court of Appeals ruled that Section 2(c) was unconstitutional as-applied in this circumstance because it violated Elster’s First Amendment right to criticize political figures without government interference. The Federal Circuit’s narrow holding did not find the entirety of Section 2(c) unconstitutional, but many scholars see the road that lies ahead. Now, the Supreme Court’s decision is pending on the matter. Ultimately, this case highlights complex nuances of trying to obtain trademark registration over marks containing political commentary, and the consequences of this pending decision could potentially erode the constitutionality of other trademark doctrines in the United States.

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