Late last week, the USPTO issued Examination Guide 1-23 which establishes guidelines for USPTO Examining Attorney compliance with Section 2(c) of the Lanham Act. The Guide provides a framework for examining certain types of marks pending the Supreme Court’s review of the Federal Circuit’s decision in the TRUMP TOO SMALL case, which found Section 2(c) of the Lanham Act, as applied by the USPTO, to be unconstitutional.

If you tuned in to our Trademark Year in Review webinar in January, you should be up to date on the TRUMP TOO SMALL case up to this point. As a quick background, applicant Steve Elster filed an application to register the TRUMP TOO SMALL mark for use on T-shirts; the USPTO refused registration under Sections 2(a) and 2(c) of the Lanham Act, on the basis that the mark suggested a false connection with or endorsement by President Donald Trump without his consent. Elster appealed the refusal to the Trademark Trial and Appeal Board, which affirmed the refusal under Section 2(c) and did not address 2(a), under the rationale that the government has a compelling interest in avoiding consumer confusion and protecting a living person’s rights of publicity and privacy. 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, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of his widow.

Elster appealed, and the Federal Circuit overturned the Board’s decision on the ground that application of Section 2(c) to bar registration of marks that are critical of government officials or public figures is unconstitutional because, absent evidence of malice, it impermissibly restricts free speech. In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022), reh’g denied per curiam, No. 2020-2205 (Fed. Cir. Aug. 31, 2022).

The USPTO filed a petition to the Supreme Court for a writ of certiorari to review the decision.

Pending the denial or grant of the petition for certiorari, the USPTO will be suspending action on pending applications for marks that are critical of government officials or public figures and may be subject to refusal under Section 2(c).

For any applications that were initially examined prior to the Federal Circuit’s decision in Elster, action will be suspended provided that section 2(c) is the only remaining issue or the application is otherwise in condition for final refusal based on other issues raised previously.

For new applications for marks subject to refusal under Section 2(c), the USPTO will be issuing advisory refusals under Section 2(c). If the mark is subject to a 2(c) refusal and this is the only issue keeping a mark from proceeding to registration, the USPTO will specify the reason for the advisory refusal and suspend the application.

Section 2(c) is applicable to marks comprised of names, portraits, or signatures identifying a living individual, including the President of the United States, unless the identified individual’s consent is of record. Since Section 2(c) was intended to protect someone who, for valid reasons, could expect to suffer damage from trademark use of their name by a third party, the requirement for consent to registration of the mark depends on whether the identified person is so well known that the public would reasonably presume a connection between the person and the applied-for goods/services. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983); In re Nieves & Nieves LLC, 113 USPQ2d 1639 (TTAB 2015) (citing In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010)); Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

We will be watching closely “2(c)” whether the Supreme Court grants cert in this closely watched case, so please stay tuned to MarkIt to Market for updates!

This article appeared in the February 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.

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