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Brooklyn Law Review

Samuel F. Ernst

Abstract

Can you register a famous person’s name as your trademark? The Lanham Act seems to say no, and the PTO interprets this to mean, no, never, no matter what. The Federal Circuit says, “yes, you can,” at least as applied to marks containing political commentary. 15 U.S.C. § 1052(c) provides, in pertinent part, that the PTO must deny federal registration to a trademark if it “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent….” Earlier this year the Federal Circuit declared this law unconstitutional in violation of the First Amendment, at least as applied to a mark that criticizes defeated former President Donald Trump by announcing, “TRUMP TOO SMALL.” Under Supreme Court precedent, the court was undoubtedly correct, and likely should have gone further to declare the provision facially invalid as overbroad. The government now suggests that section 2(c) is necessary to protect free speech, because granting applicants trademarks in political commentary interferes with others seeking to say such things. This fear is unfounded and does not save the constitutionality of the provision. In fact, section 2(c) fails to address the real First Amendment concerns with the Lanham Act: the potential for politicians themselves to monopolize speech critical or complimentary of themselves through trademark registration. Indeed, Section 2(c) results in de facto viewpoint discrimination because it allows politicians to veto marks containing their names that lodge criticism, while registering marks containing their names of which they approve. These free speech issues with trademark registration highlight the limitations of the Supreme Court’s, rigid, categories-based First Amendment jurisprudence, which focuses myopically on the negative rights of the speaker, without weighing the way in which enforcement of those rights may burden the free speech of others and result in less free speech in society. This problem is particularly odious in the context of intellectual property, where speakers are not only asserting the right to speak, but also the exclusionary right to prevent others from saying the same thing. A solution to the problems with trademarking political speech already lurks in our trademark laws and can be implemented without offending the First Amendment: the “failure to function” doctrine. Political slogans, no matter who wields them, and no matter whether they are critical or complimentary, do not function primarily as source indicators. There is no reason grounded in legitimate trademark policy to protect such marks. The fact that they are protected now is yet further indication that the Lanham Act has evolved far beyond its intended purpose as a consumer protection and fair-trade statute into a species of intellectual property that threatens free speech by granting ownership in mere words.

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