Commercial Litigation Update

The question of whether a would-be trademark, “TRUMP TOO SMALL,” warrants a First Amendment exception to the Lanham Act’s prohibition on registering a living person’s name as a trademark without that person’s permission has now reached the United States Supreme Court. On June 5, 2023, in Vidal v. Elster, Case 22-704, the high court granted the United States Patent and Trademark Office’s (hereinafter, the “Government”) petition for certiorari to determine whether, under 15 U.S.C. § 1052(c), the refusal to register a trademark containing another person’s name violates the Free Speech Clause of the First Amendment when that mark implies criticism of a government official or public figure. As we wrote last year, one cannot normally trademark another person’s name, but in the case of Steve Elster’s trademark application for TRUMP TOO SMALL, the United States Court of Appeals for the Federal Circuit (the “CAFC”) held in In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022), that one’s First Amendment right to make social commentary about a public figure trumps (bad pun intended) the Lanham Act. Whether the Supreme Court agrees with the CAFC soon will be determined.

In a recent article examining international trademark, copyright and related issues, we started with a focus on the place humor holds as a possible defense. To understand the roots of the penchant for humor to act as a bulwark of humanity’s way of defending itself, consider this story:

For better or worse, trademark infringement claims enjoy relaxed standing requirements which enable plaintiffs to move quickly to quash would-be infringers. These requirements are at their lowest ebb when parties seek declaratory judgments. This results in some creative uses of the declaratory judgment claim.

Interesting question: Can someone trademark another person’s name without that person’s consent? The answer to that is usually “no,” but, hey, we would not be the first people to say that we live in interesting times. And if we said that, we would not be infringing on anyone’s rights. That aside, the answer to the first question this week is “yes,” at least when the person is a public figure, and the trademark is viewed as an exercise of free speech critical of that public figure.

Long before the birth of Elvis Presley in 1935, and even longer before his recent 86^th birthday on January 8, 2021, King Arthur was the legendary king of choice, and his story was most completely told in Le Morte d'Arthur by Sir Thomas Malory. Hence, we embrace the paraphrased allusion in the title above, to both Arthur and the King of Rock-n-Roll, who despite his absence from the public stage since 1977 remains a brand. Thus, Elvis is a good example of what a lay person would call post-mortem publicity rights, as his brand remains one today valued at over $300 million. What is also ...