Katherine K. Vidal v. Steve Elster Analysis

Using the Supreme Court case; Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, Petitioner V. Steve Elster, write a 700-to-950-word analysis on the Petitioner’s (Katherine K. Vidal) Briefs that are attached below. The analysis must set forth an analysis of the issues, address the parties’ arguments for their respective decisions, cite to precedent, when possible from the respective briefs. If relying on other outside sources make sure to cite to the authority. There can be more than one argument presented and organize the section accordingly.

How to cite authorities has been attached below as well.

No. 22-704
In the Supreme Court of the United States
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND
DIRECTOR, UNITED STATES PATENT AND
TRADEMARK OFFICE, PETITIONER
v.
STEVE ELSTER
ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE PETITIONER
DAVID L. BERDAN
General Counsel
THOMAS W. KRAUSE
Solicitor
CHRISTINA J. HIEBER
MARY BETH WALKER
Associate Solicitors
U.S. Patent and Trademark
Office
Alexandria, Va. 22314
ELIZABETH B. PRELOGAR
Solicitor General
Counsel of Record
BRIAN M. BOYNTON
Principal Deputy Assistant
Attorney General
MALCOLM L. STEWART
Deputy Solicitor General
FREDERICK LIU
Assistant to the Solicitor
General
DANIEL TENNY
JOSHUA M. SALZMAN
LEIF OVERVOLD
Attorneys
Department of Justice
Washington, D.C. 20530-0001
SupremeCtBriefs@usdoj.gov
(202) 514-2217
QUESTION PRESENTED
Section 1052(c) of Title 15 provides in pertinent part
that a trademark shall be refused registration if it
“[c]onsists of or comprises a name * * * identifying a
particular living individual except by his written consent.” 15 U.S.C. 1052(c). The question presented is as
follows:
Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First
Amendment when the mark contains criticism of a government official or public figure.
(I)
TABLE OF CONTENTS
Page
Opinions below …………………………………………………………………… 1
Jurisdiction………………………………………………………………………… 1
Constitutional and statutory provisions involved…………………. 2
Statement ………………………………………………………………………….. 2
A. Legal background…………………………………………………… 2
B. Proceedings below ………………………………………………….. 6
Summary of argument ……………………………………………………….. 8
Argument…………………………………………………………………………. 11
The trademark-registration bar in 15 U.S.C. 1052(c) is
constitutional on its face and as applied ………………………… 11
A. Because Section 1052(c) is viewpoint-neutral,
Tam and Brunetti are not controlling here ……………. 11
B. Section 1052(c) is consistent with the First
Amendment……………………………………………………….. 15
1. Because Section 1052(c) is a viewpoint-neutral
condition on a government benefit, not a
restriction on speech, heightened scrutiny is
unwarranted …………………………………………………… 16
a. This Court has declined to apply
heightened scrutiny to viewpoint-neutral
conditions on government benefits …………… 16
b. Section 1052(c) is a viewpoint-neutral
condition on a government benefit, not a
restriction on speech …………………………………. 21
c. The nature of the benefits that federal
trademark registration provides makes
heightened scrutiny particularly
unwarranted……………………………………………… 24
2. Congress acted reasonably in denying the
benefits of federal trademark registration to
the marks covered by Section 1052(c)………………. 28
(III)
IV
Table of Contents—Continued:
Page
C.
The court of appeals erred in declaring Section
1052(c) unconstitutional as applied to marks that
criticize government officials or public figures ………. 33
1. The court of appeals erred in characterizing
Section 1052(c) as a restriction on speech ………… 33
2. Because Section 1052(c) does not restrict
speech, the court of appeals’ as-applied holding
finds no footing in the First Amendment …………. 36
Conclusion ……………………………………………………………………….. 40
Appendix — Statutory provisions……………………………………. 1a
TABLE OF AUTHORITIES
Cases:
ADCO Indus. – Techs., L.P., In re,
2020 U.S.P.Q.2d 53786, 2020 WL 730361
(T.T.A.B. Feb. 11, 2020) ……………………………………….. 31, 32
B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138 (2015)…………………………………………………. 3, 39
Cardtoons, L.C. v. Major League Baseball Players
Ass’n, 95 F.3d 959 (10th Cir. 1996) …………………………….. 38
Christian Legal Soc’y Chapter of the Univ. of Cal.,
Hastings Coll. of the Law v. Martinez,
561 U.S. 661 (2010)…………………………………18, 19, 23, 27, 35
Comedy III Prods., Inc. v. Gary Saderup, Inc.,
21 P.3d 797 (Cal. 2001), cert. denied,
534 U.S. 1078 (2002)…………………………………………………… 38
Cornelius v. NAACP Legal Def. & Educ. Fund, Inc.,
473 U.S. 788 (1985)…………………………………19, 28, 30, 37, 38
D.C. One Wholesaler, Inc. v. Chien,
120 U.S.P.Q.2d 1710, 2016 WL 7010638
(T.T.A.B. Nov. 9, 2016) ………………………………………………. 26
V
Cases—Continued:
Page
Davenport v. Washington Educ. Ass’n,
551 U.S. 177 (2007)……………………………..9, 17, 20, 26, 37, 38
ETW Corp. v. Jireh Publ’g, Inc.,
332 F.3d 915 (6th Cir. 2003) ……………………………………….. 38
Hamilton-Brown Shoe Co. v. Wolf Bros. & Co.,
240 U.S. 251 (1916)………………………………………………………. 3
Hart v. Electronic Arts, Inc.,
717 F.3d 141 (3d Cir. 2013),
cert. dismissed, 573 U.S. 989 (2014)……………………………. 38
Hoefflin, In re, 97 U.S.P.Q.2d 1174,
2010 WL 5191373 (T.T.A.B. Dec. 10, 2010) …………………. 29
Iancu v. Brunetti, 139 S. Ct. 2294 (2019) …. 4, 8, 9, 11-15, 17,
21, 22, 24, 27-29, 31, 34-36, 39
Jack Daniel’s Props., Inc. v. VIP Prods. LLC,
143 S. Ct. 1578 (2023) …………………………………3-5, 24-26, 32
John Anthony, Inc. v. Fashions by John Anthony,
Inc., 209 U.S.P.Q. 517, 1980 WL 39056
(T.T.A.B. Dec. 30, 1980) …………………………………………….. 28
K Mart Corp. v. Cartier, Inc.,
485 U.S. 176 (1988)……………………………………………. 3, 25, 39
Lohan v. Take-Two Interactive Software, Inc.,
97 N.E.3d 389 (N.Y. 2018)………………………………………….. 38
Maher v. Roe, 432 U.S. 464 (1977) ………………………………… 17
Martin v. Carter Hawley Hale Stores, Inc.,
206 U.S.P.Q. 931, 1979 WL 24811
(T.T.A.B. Dec. 12, 1979) ……………………………………….. 14, 29
Matal v. Tam, 582 U.S. 218 (2017)………….. 3, 8, 11-13, 21, 30
Moseley v. V Secret Catalogue, Inc.,
537 U.S. 418 (2003)………………………………………………………. 3
National Endowment for the Arts v. Finley,
524 U.S. 569 (1998)…………………………………………………….. 17
Paulsen v. Personality Posters, Inc.,
299 N.Y.S.2d 501 (Sup. Ct. 1968)………………………………… 38
VI
Cases—Continued:
Page
Perry Educ. Ass’n v. Perry Local Educators’ Ass’n,
460 U.S. 37 (1983) …………………………………………… 19, 27, 28
Pleasant Grove City v. Summum,
555 U.S. 460 (2009)…………………………………………………….. 18
Reed v. Town of Gilbert, 576 U.S. 155 (2015)…………………. 17
Regan v. Taxation With Representation of Wash.,
461 U.S. 540 (1983)……………………………17, 18, 24, 28, 37, 38
Rosenberger v. Rector & Visitors of Univ. of Va.,
515 U.S. 819 (1995)……………………………………………….. 19, 35
Rust v. Sullivan, 500 U.S. 173 (1991) ……………. 17, 18, 23, 38
San Francisco Arts & Athletics, Inc. v. United
States Olympic Comm., 483 U.S. 522 (1987) …………. 25, 26
Sauer, In re, 27 U.S.P.Q.2d 1073,
1993 WL 236534 (T.T.A.B. Apr. 23, 1993) …………………… 32
Titan Sports, Inc v. Comics World Corp.,
870 F.2d 85 (2d Cir. 1989) ………………………………………….. 38
United States v. American Library Ass’n,
539 U.S. 194 (2003)…………………………………………………….. 28
Wal-Mart Stores, Inc. v. Samara Bros.,
529 U.S. 205 (2000)………………………………………………………. 3
Ysursa v. Pocatello Educ. Ass’n,
555 U.S. 353 (2009)……… 16, 17, 20, 21, 23, 28, 30, 35, 37, 38
Constitution, treaty, statutes, and regulation:
U.S. Const. Amend. I
(Free Speech Clause) ………. 2, 7-13, 15-20, 24, 25, 27, 33-40
Paris Convention for the Protection of Industrial
Property art. 6quinquies, done July 14, 1967,
21 U.S.T. 1643, 828 U.N.T.S. 331 ……………………………….. 30
Act of Feb. 20, 1905, ch. 592, § 5(b), 33 Stat. 726……………… 5
Lanham Act, ch. 540, 60 Stat. 427
(15 U.S.C. 1051 et seq.) ………………………………………………… 4
§ 2(c), 60 Stat. 428…………………………………………………….. 5
VII
Statutes and regulation—Continued:
Page
15 U.S.C. 1051(a)(1)……………………………………….. 4, 30, 1a
15 U.S.C. 1051(a)(2)…………………………………………….. 4, 1a
15 U.S.C. 1051(b) ………………………………………………… 6, 2a
15 U.S.C. 1051(b)(1) ……………………………………………. 4, 2a
15 U.S.C. 1051(b)(2) ……………………………………………. 4, 3a
15 U.S.C. 1052…………………………………………………….. 2, 27
15 U.S.C. 1052(a) ……………………..5, 6, 8, 12, 13, 27, 32, 33
15 U.S.C. 1052(b) …………………………………………… 5, 27, 8a
15 U.S.C. 1052(c) ……..2, 5-12, 14-16, 21-24, 28, 29, 31-34,
36-40, 8a
15 U.S.C. 1052(d) …………………………………………… 5, 27, 8a
15 U.S.C. 1052(e) ………………………………………………. 27, 9a
15 U.S.C. 1052(e)(1)…………………………………………….. 5, 9a
15 U.S.C. 1057(a) …………………………………………. 5, 30, 10a
15 U.S.C. 1057(b) ………………………………………………. 4, 11a
15 U.S.C. 1062………………………………………………………… 30
15 U.S.C. 1065 (2018 & Supp. III 2021) ……………… 4, 14a
15 U.S.C. 1072……………………………………………… 4, 25, 15a
15 U.S.C. 1091………………………………………………………… 30
15 U.S.C. 1111……………………………………………… 5, 30, 16a
15 U.S.C. 1114(1)(a)………………………………………………….. 3
15 U.S.C. 1115(a) …………………………………………. 4, 25, 16a
15 U.S.C. 1115(b) ………………………………………………. 4, 17a
15 U.S.C. 1124……………………………………………… 4, 25, 19a
15 U.S.C. 1125(a) ……………………………………………………… 3
15 U.S.C. 1127……………………………………………….. 2, 5, 20a
15 U.S.C. 1141b………………………………………………………. 30
35 U.S.C. 2(a)(1)…………………………………………………………….. 4
37 C.F.R. 2.142(f)(6) ………………………………………………………. 6
VIII
Miscellaneous:
Page
1 J. Thomas McCarthy & Roger E. Schechter,
The Rights of Publicity and Privacy
(2d ed. 2023)………………………………………………. 25, 28, 29, 40
J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (5th ed. 2023):
Vol. 2 ……………………………………………………………………… 14
Vol. 3 ………………………………………………………………. 4, 5, 26
W. Page Keeton et al., Prosser and Keeton on the
Law of Torts (5th ed. 1984) …………………………………… 28, 29
United States Patent and Trademark Office (USPTO):
Trademark Manual of Examining Procedure
(TMEP) (July 2022), https://tmep.uspto.gov……… 5, 26
Trademark Official Gazette,
https://www.uspto.gov/learning-andresources/official-gazette/trademark-officialgazette-tmog (last visited July 25, 2023)……………….. 30
Trademark Status & Document Retrieval
(TSDR), https://tsdr.uspto.gov
(last visited July 25, 2023)………………………………………. 6
In the Supreme Court of the United States
No. 22-704
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND
DIRECTOR, UNITED STATES PATENT AND
TRADEMARK OFFICE, PETITIONER
v.
STEVE ELSTER
ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE PETITIONER
OPINIONS BELOW
The opinion of the court of appeals (Pet. App. 1a-21a)
is reported at 26 F.4th 1328. The decisions of the United
States Patent and Trademark Office’s Trademark Trial
and Appeal Board (Pet. App. 22a-32a) and examining
attorney (Pet. App. 33a-40a, 41a-51a, 52a-59a, 60a-64a)
are unreported.
JURISDICTION
The judgment of the court of appeals was entered on
February 24, 2022. A petition for rehearing was denied
on August 31, 2022 (Pet. App. 65a-66a). On November
18, 2022, the Chief Justice extended the time within
which to file a petition for a writ of certiorari to and including December 29, 2022. On December 20, 2022, the
(1)
2
Chief Justice further extended the time to and including
January 27, 2023, and the petition was filed on that date.
The petition for a writ of certiorari was granted on June
5, 2023. The jurisdiction of this Court rests on 28 U.S.C.
1254(1).
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED
The First Amendment provides in pertinent part
that “Congress shall make no law * * * abridging the
freedom of speech.” U.S. Const. Amend. I.
Section 1052 of Title 15 of the United States Code
provides in pertinent part:
No trademark by which the goods of the applicant
may be distinguished from the goods of others shall
be refused registration on the principal register on
account of its nature unless it—
* * * * *
(c) Consists 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 the widow.
15 U.S.C. 1052. Other statutory provisions are reproduced in an appendix to this brief. App., infra, 1a-21a.
STATEMENT
A. Legal Background
1. A trademark is a “word, name, symbol, or device”
that a person uses or intends to use “to identify and distinguish his or her goods” from “those manufactured or
sold by others and to indicate the source of the goods.”
15 U.S.C. 1127. A “trademark’s ‘primary’ function” is
3
“ ‘to identify the origin or ownership of the article to
which it is affixed.’” Jack Daniel’s Props., Inc. v. VIP
Prods. LLC, 143 S. Ct. 1578, 1583 (2023) (citation omitted); see Wal-Mart Stores, Inc. v. Samara Bros., 529
U.S. 205, 212 (2000) (explaining that the “predominant
function” of a trademark is “source identification”).
Thus, “whatever else it may do, a trademark is not a
trademark unless it identifies a product’s source” and
“distinguishes that source from others.” Jack Daniel’s,
143 S. Ct. at 1583.
At common law, “[o]ne who first uses a distinct mark
in commerce * * * acquires rights to that mark.” B&B
Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142
(2015). “Those rights include preventing others from
using the mark.” Ibid.; see K Mart Corp. v. Cartier,
Inc., 485 U.S. 176, 185 (1988) (“Trademark law, like contract law, confers private rights, which are themselves
rights of exclusion.”). The owner of a mark thus enjoys
the “exclusive” right to use it in commerce. HamiltonBrown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 259
(1916).
To exclude others from using the mark, its owner
may bring an infringement action under state or federal
law. See Matal v. Tam, 582 U.S. 218, 225-226 (2017); 15
U.S.C. 1114(1)(a) (cause of action for infringement of federally registered marks); 15 U.S.C. 1125(a) (cause of action for infringement of marks that are not federally
registered). “Infringement law protects consumers from
being misled by the use of infringing marks and also
protects producers from unfair practices by an imitating competitor.” Moseley v. V Secret Catalogue, Inc.,
537 U.S. 418, 428 (2003) (citation and internal quotation
marks omitted).
4
2. Under the Lanham Act, ch. 540, 60 Stat. 427 (15
U.S.C. 1051 et seq.), the United States Patent and Trademark Office (USPTO) “administers a federal registration system for trademarks.” Iancu v. Brunetti, 139
S. Ct. 2294, 2297 (2019). “Registration of a mark is not
mandatory,” but it “gives trademark owners valuable
benefits.” Ibid.; see 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 19:9 (5th ed.
2023) (McCarthy) (listing benefits). Those benefits help
owners enforce their rights against infringers. See Jack
Daniel’s, 143 S. Ct. at 1584. For example, registration
serves as nationwide “constructive notice of the registrant’s claim of ownership,” 15 U.S.C. 1072, “which forecloses some defenses in infringement actions,” Brunetti, 139 S. Ct. at 2298. Registration is “prima facie
evidence of the validity of the registered mark,” “of the
registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in
commerce.” 15 U.S.C. 1115(a); see 15 U.S.C. 1057(b).
Registration can be used to stop the importation of goods
that bear an infringing mark. 15 U.S.C. 1124. And after
the “registered mark has been in continuous use for five
consecutive years,” the owner’s right to use the mark
can become “incontestable,” except on certain grounds.
15 U.S.C. 1065 (2018 & Supp. III 2021), 1115(b).
To obtain the benefits of registration, a person who
uses or intends to use a trademark in commerce applies
to register the mark on the USPTO’s “principal register.” 15 U.S.C. 1051(a)(1) and (b)(1); see 35 U.S.C. 2(a)(1).
The application must include a description of “the goods
in connection with which the mark is used” or is intended
to be used. 15 U.S.C. 1051(a)(2); see 15 U.S.C. 1051(b)(2).
If the USPTO concludes that the criteria for registration are satisfied, the agency issues the owner a certifi-
5
cate of registration “in the name of the United States of
America.” 15 U.S.C. 1057(a). The owner then “may give
notice that his mark is registered by displaying with the
mark the words ‘Registered in U.S. Patent and Trademark Office’ or ‘Reg. U.S. Pat. & Tm. Off.’ or the letter
R enclosed within a circle, thus ®.” 15 U.S.C. 1111.
Only marks that satisfy the statutory criteria can be
registered. “Consistent with trademark law’s basic purpose, the lead criterion for registration is that the mark
‘in fact serve as a “trademark” to identify and distinguish goods.’ ” Jack Daniel’s, 143 S. Ct. at 1583 (quoting
3 McCarthy § 19:10); see 15 U.S.C. 1127; USPTO,
Trademark Manual of Examining Procedure (TMEP)
§ 1202.04 (July 2022). In addition, the Lanham Act directs the USPTO to “refuse[] registration” of, among
others, marks that are deceptive, 15 U.S.C. 1052(a);
marks containing a flag, coat of arms, or insignia of the
United States, a State, or a foreign nation, 15 U.S.C.
1052(b); marks that so resemble other marks that they
are likely to cause confusion, 15 U.S.C. 1052(d); and
marks that are merely descriptive, 15 U.S.C. 1052(e)(1).
This case concerns a Lanham Act provision codified
at 15 U.S.C. 1052(c), which directs the USPTO to refuse
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.” Since 1946,
the federal trademark-registration program has barred
the registration of a mark that consists of or comprises
such a name. Lanham Act § 2(c), 60 Stat. 428; cf. Act of
Feb. 20, 1905, ch. 592, § 5(b), 33 Stat. 726 (providing that
“no portrait of a living individual may be registered as
a trade-mark, except by the consent of such individual,
evidenced by an instrument in writing”).
6
B. Proceedings Below
1. In 2018, respondent applied for federal registration of the mark TRUMP TOO SMALL based on an asserted intent to use the mark in commerce on shirts.
Pet. App. 22a & n.1; see 15 U.S.C. 1051(b). “The mark
consists of standard characters, without claim to any
particular font style, size, or color.” Pet. App. 70a.1
A USPTO examining attorney refused registration
under Section 1052(c). Pet. App. 52a-59a. The examining attorney explained that “the use of the name
‘TRUMP’ in the proposed mark would be construed by
the public as a reference to Donald Trump” and that,
without then-President Trump’s written consent, registration had to be refused. Id. at 58a; see id. at 53a-56a.
The examining attorney further explained that Section
1052(c) was meant to “protect rights of privacy and publicity that living persons have in the designations that
identify them.” Id. at 57a.
Respondent appealed to the USPTO’s Trademark
Trial and Appeal Board (Board), but at the examining
attorney’s request, the Board suspended the appeal and
remanded to the examining attorney for further examination. See Pet. App. 23a n.2, 33a; 37 C.F.R. 2.142(f)(6).
The examining attorney then found that registration
should also be refused under 15 U.S.C. 1052(a), which
bars the registration of marks that “falsely suggest a
connection with persons, living or dead.” Ibid.; see Pet.
App. 39a.
The Board affirmed the refusal of registration under
Section 1052(c). Pet. App. 22a-32a. The Board agreed
with the examining attorney that respondent’s mark
The administrative record in this case is available at USPTO,
Trademark Status & Document Retrieval (TSDR), https://tsdr.
uspto.gov (search for U.S. Serial No. 87749230).
1
7
“comprises the name of President Donald Trump without his written consent.” Id. at 32a. The Board also rejected respondent’s contention that the refusal to register his mark violated his right to free speech under the
First Amendment. Id. at 29a-32a. The Board explained
that Section 1052(c) is “not [a] direct restriction[] on
speech,” but rather “only set[s] criteria for trademark
registration.” Id. at 30a. The Board also emphasized
that Section 1052(c) applies “regardless of the viewpoint
conveyed by the proposed mark.” Id. at 31a. Having
affirmed the refusal to register under Section 1052(c),
the Board found it unnecessary to “reach the refusal to
register under Section [1052(a)’s] false association
clause.” Id. at 32a.
2. The court of appeals reversed. Pet. App. 1a-21a.
The court held that “applying [Section 1052(c)] to bar
registration of [respondent’s] mark unconstitutionally
restricts free speech in violation of the First Amendment.” Id. at 1a.
The court of appeals acknowledged that Section
1052(c) “does not involve viewpoint discrimination.”
Pet. App. 5a. The court also recognized that Section
1052(c) “does not prevent [respondent] from communicating his message outright.” Id. at 6a. The court nevertheless viewed Section 1052(c) as a “content-based restriction[]” that is subject to “strict” or “intermediate”
scrutiny under the First Amendment. Id. at 9a. In the
court’s view, the application of Section 1052(c) to respondent’s mark did not survive such scrutiny “because
the government does not have a privacy or publicity
interest in restricting speech critical of government officials or public figures in the trademark context—at
8
least absent actual malice, which is not alleged here.”
Id. at 20a.2
3. The court of appeals denied rehearing en banc.
Pet. App. 65a-66a.
SUMMARY OF ARGUMENT
The Lanham Act directs the USPTO to refuse registration of a mark that “[c]onsists of or comprises a name
* * * identifying a particular living individual” without
“his written consent.” 15 U.S.C. 1052(c). The court of
appeals held that the USPTO’s refusal to register a mark
under Section 1052(c) violates the First Amendment
when the mark contains criticism of a government official or public figure. That holding was erroneous. Both
on its face and as applied to the mark at issue here, Section 1052(c) does not restrict speech, but simply imposes
a reasonable, viewpoint-neutral condition on the benefits
available under the federal trademark-registration program.
A. This Court’s decisions in Matal v. Tam, 582 U.S.
218 (2017), and Iancu v. Brunetti, 139 S. Ct. 2294 (2019),
are not controlling here. Tam and Brunetti involved
statutory bars on trademark registration that this Court
found unconstitutional because they discriminated based
The court of appeals noted that the Board had not addressed the
examining attorney’s refusal of registration under Section 1052(a),
and that the government had not raised Section 1052(a) “as an alternative basis for affirming the Board’s decision.” Pet. App. 15a n.3.
The court nevertheless rejected the possibility of upholding the examining attorney’s decision based on “an interest in preventing the
issuance of marks that falsely suggest that an individual * * * has
endorsed a particular product or service.” Id. at 15a. The court explained that “[n]o plausible claim could be * * * made that the disputed mark suggests that President Trump has endorsed [respondent’s] product.” Ibid.
2
9
on viewpoint. Section 1052(c), in contrast, undisputedly
“does not involve viewpoint discrimination.” Pet. App.
5a. This case therefore presents an issue that Tam and
Brunetti left open: “how to evaluate viewpoint-neutral”
bars on trademark registration under the First Amendment. Brunetti, 139 S. Ct. at 2302 n.* (emphasis added).
B. This Court’s First Amendment precedents have
long distinguished restrictions on speech (which are
subject to heightened scrutiny) from conditions on government benefits (which are not). That distinction follows from the text of the Amendment, which prohibits
laws “abridging the freedom of speech.” U.S. Const.
Amend. I (emphasis added). It also reflects the recognition that, “when the government is acting in a capacity
other than as regulator,” the “risk” that its actions “will
impermissibly interfere with the marketplace of ideas is
sometimes attenuated.” Davenport v. Washington Educ.
Ass’n, 551 U.S. 177, 188 (2007).
As a viewpoint-neutral bar on federal trademark
registration, Section 1052(c) is a condition on a government benefit, not a restriction on speech. Refusal of registration under Section 1052(c) does not limit the rights
of trademark owners to use their marks in commerce or
to engage in whatever speech they wish. The only effect
of the refusal is to deny an owner the benefits—i.e.,
additional mechanisms to prevent use of the same mark
by competitors—that federal registration provides.
Because Section 1052(c) does not restrict speech,
heightened scrutiny is unwarranted. Three additional
aspects of federal trademark registration reinforce that
conclusion. First, the purpose and effect of federal
trademark registration is to enhance the mark owner’s
ability to prevent others’ use of the mark—and thus to
restrict others’ speech. Second, because conveying a
10
message is only incidental to a mark’s primary sourceidentification function, the risk that decisions refusing
registration will distort the broader marketplace of ideas
is highly attenuated. Third, the use of content-based
criteria to determine whether particular marks may be
registered is an inherent aspect of any trademarkregistration program, and heightened scrutiny would
threaten to invalidate that defining characteristic.
Because heightened scrutiny is unwarranted, the
First Amendment inquiry turns on whether Section
1052(c) has a reasonable basis. The justifications for
Section 1052(c) easily meet that standard. Using another individual’s name for commercial purposes, without that individual’s consent, has long been viewed as a
form of commercial appropriation. The government
may reasonably decline to reward, or to associate itself
with, such appropriation of another’s identity. The unauthorized use of someone else’s name also risks confusion about a product’s source. Because Section 1052(c)
is a reasonable, viewpoint-neutral condition on federal
trademark registration, it does not violate the First
Amendment.
C. The court of appeals erred in holding Section
1052(c) unconstitutional as applied to marks that criticize a government official or public figure. That holding
rested on the court’s view that Section 1052(c) is a restriction on speech, and the errors in the court’s reasoning are apparent once Section 1052(c) is correctly understood to be a condition on a government benefit.
Congress has made enhanced enforcement mechanisms available to the owners of registered marks,
thereby assisting the owners’ ability to prevent use of
their marks by others. Congress has broad latitude,
however, to limit the availability of those enforcement
11
mechanisms through viewpoint-neutral registration criteria. The anomalous effect of the court of appeals’ decision is to vest respondent with a First Amendment
right to prevent others from speaking and to obtain the
government’s assistance in that endeavor, notwithstanding Congress’s decision to exclude respondent’s
own mark from eligibility for the benefits that federal
registration confers. And it is particularly strange to
treat the political character of respondent’s message as
a factor supporting that result.
ARGUMENT
THE TRADEMARK-REGISTRATION BAR IN 15 U.S.C. 1052(c)
IS CONSTITUTIONAL ON ITS FACE AND AS APPLIED
For more than 75 years, Congress has directed the
USPTO to refuse the registration of trademarks that
use the names of particular living individuals without
their written consent. 15 U.S.C. 1052(c). That viewpointneutral bar operates not as a restriction on speech, but
as a condition on the benefits that federal trademark
registration provides. Because the government may
reasonably decline to reward or associate itself with the
use of marks that commercially appropriate someone
else’s identity, Section 1052(c) is consistent with the
First Amendment.
A. Because Section 1052(c) Is Viewpoint-Neutral, Tam And
Brunetti Are Not Controlling Here
During the past decade, this Court has twice addressed the constitutionality of statutory bars on federal trademark registration. See Iancu v. Brunetti, 139
S. Ct. 2294 (2019); Matal v. Tam, 582 U.S. 218 (2017).
In both of those cases, the Court concluded that the provisions at issue violated the First Amendment. See
Brunetti, 139 S. Ct. at 2297. It did so, however, on the
12
ground that those provisions discriminated based on
viewpoint, ibid., without deciding “how to evaluate
viewpoint-neutral” bars on trademark registration, id.
at 2302 n.* (emphasis added). Because Section 1052(c)
is viewpoint-neutral, this Court’s decisions in Tam and
Brunetti are not controlling here.
1. Tam involved an application for federal registration of the mark THE SLANTS. 582 U.S. at 228. The
USPTO refused registration, citing the Lanham Act’s
bar on registering marks that “disparage” any “persons, living or dead.” 15 U.S.C. 1052(a); see Tam, 582
U.S. at 228-229. Although the “eight-Justice Court divided evenly between two opinions,” “all the Justices
agreed on two propositions.” Brunetti, 139 S. Ct. at 22982299. First, if the disparagement bar was viewpointbased, it was unconstitutional because it could not survive heightened scrutiny under the First Amendment.
See Tam, 582 U.S. at 223, 243-247 (Alito, J.); id. at 247,
251-253 (Kennedy, J.). And second, “the disparagement
bar was viewpoint-based.” Brunetti, 139 S. Ct. at 2299;
see Tam, 582 U.S. at 223, 243 (Alito, J.); id. at 248-251
(Kennedy, J.). Those two holdings taken together were
sufficient to decide the case.
The eight-Justice Court otherwise “could not agree”
on an “overall framework” for determining the constitutionality of statutory bars on federal trademark registration. Brunetti, 139 S. Ct. at 2298. “In particular,
no majority emerged to resolve whether a Lanham Act
bar is a condition on a government benefit or a simple
restriction on speech.” Id. at 2298-2299. The Court in
Tam thus “left open” the question “of how exactly the
trademark registration system is best conceived under
[the Court’s] precedents.” Id. at 2303 (Roberts, C.J.,
concurring in part and dissenting in part); see Tam, 582
13
U.S. at 244 & n.16 (Alito, J.) (“leav[ing] open” the question whether viewpoint-neutral criteria could be “saved”
by analyzing federal registration as a “type of government program in which some content- and speakerbased restrictions are permitted”); id. at 252 (Kennedy,
J.) (leaving open “the question of how other provisions
of the Lanham Act should be analyzed under the First
Amendment”).
2. In Brunetti, this Court addressed a First Amendment challenge to another statutory bar on federal
trademark registration. Brunetti involved an application for federal registration of the mark FUCT for use
on clothing. 139 S. Ct. at 2297. The USPTO refused
registration, citing the Lanham Act’s bar on registering
marks that consist of or comprise “immoral” or “scandalous matter.” 15 U.S.C. 1052(a); see Brunetti, 139
S. Ct. at 2298. The Court held that the “immoral or
scandalous” registration bar was “viewpoint-based,”
Brunetti, 139 S. Ct. at 2299, and therefore violated the
First Amendment “for the same reason” as the disparagement bar that had been held invalid in Tam, id. at
2297. As in Tam, that holding made it unnecessary for
the Court to “say anything about how to evaluate
viewpoint-neutral restrictions on trademark registration.” Id. at 2302 n.*.
Justice Alito concurred, writing separately to emphasize that the Court’s decision did “not prevent Congress from adopting a more carefully focused statute
that precludes the registration of marks containing vulgar terms that play no real part in the expression of
ideas.” Brunetti, 139 S. Ct. at 2303 (Alito, J., concurring). Three other Justices dissented in part. In their
view, “the ‘scandalous’ portion of the provision” at issue
could have been construed to “bar only marks that of-
14
fend because of their mode of expression—marks that
are obscene, vulgar, or profane.” Id. at 2303 (Roberts,
C.J., concurring in part and dissenting in part); see id.
at 2304 (Breyer, J., concurring in part and dissenting in
part); id. at 2311 (Sotomayor, J., concurring in part and
dissenting in part). Based on that narrowing construction, the dissenters would have upheld the bar on registration of “scandalous” marks as a viewpoint-neutral
provision that “merely denied certain additional benefits associated with federal trademark registration.” Id.
at 2303 (Roberts, C.J., concurring in part and dissenting
in part); see id. at 2304, 2306 (Breyer, J., concurring in
part and dissenting in part); id. at 2316-2318 (Sotomayor,
J., concurring in part and dissenting in part).
3. Here, unlike in Tam and Brunetti, the challenged
Lanham Act provision undisputedly “does not involve
viewpoint discrimination.” Pet. App. 5a; see ibid. (noting respondent’s agreement below that Section 1052(c)
is not viewpoint-based). Section 1052(c) directs the
USPTO to refuse registration of marks that consist of
or comprise “a name, portrait, or signature identifying
a particular living individual except by his written consent.” 15 U.S.C. 1052(c). Whether a particular person’s
consent is required depends on “whether the mark
would be recognized and understood by the public as
identifying the person.” Martin v. Carter Hawley Hale
Stores, Inc., 206 U.S.P.Q. 931, 1979 WL 24811, at *2
(T.T.A.B. Dec. 12, 1979) (citation omitted). If evidence
shows that the mark would be so perceived, and if the
person has not given written consent to the mark’s registration, Section 1052(c) directs the USPTO to refuse
registration, “regardless of the viewpoint conveyed by
the proposed mark.” Pet. App. 31a; see 2 McCarthy
§ 13:37.50 (explaining that the applicability of Section
15
1052(c) does not depend on “whether the use of [the]
name is flattering, critical or neutral”).
This case illustrates the viewpoint-neutral application
of Section 1052(c). The USPTO first determined that respondent’s mark included a name that “the public would
view” as “the name of a particular living individual.”
Pet. App. 28a; see id. at 25a-29a. That proposition is not
controverted. Indeed, respondent’s stated objective in
fashioning the mark—to communicate a critical message about the former President—depends on the public recognizing and understanding the word “TRUMP”
in the mark to refer to that specific individual.
Having concluded that respondent’s mark “identif[ies]” former President Trump within the meaning of
Section 1052(c), the USPTO then determined that the
record contained no written consent from him. Pet.
App. 26a. The USPTO therefore refused registration
under Section 1052(c). Id. at 32a. At no point in reaching that decision did the USPTO consider “the ideas or
opinions” that respondent’s mark might convey. Brunetti, 139 S. Ct. at 2299.
Because Section 1052(c) does not discriminate based
on viewpoint, this Court’s decisions in Tam and Brunetti are not controlling here. Instead, this case presents the question that the Court left open in Tam and
Brunetti: how a viewpoint-neutral bar on federal trademark registration should be evaluated under the First
Amendment, including whether it should be considered
“a condition on a government benefit or a simple restriction on speech.” Brunetti, 139 S. Ct. at 2299; see
id. at 2302 n.*.
B. Section 1052(c) Is Consistent With The First Amendment
The First Amendment states that “Congress shall
make no law * * * abridging the freedom of speech.”
16
U.S. Const. Amend. I. In determining whether a particular law “abridg[es]” the freedom of speech, ibid.,
this Court has distinguished restrictions on speech
(which are subject to heightened scrutiny) from conditions on government benefits (which are not). As a bar
on federal trademark registration, Section 1052(c) falls
within the latter category. And because Section 1052(c)
is a reasonable, viewpoint-neutral condition on registration, it is consistent with the First Amendment.
1. Because Section 1052(c) is a viewpoint-neutral condition on a government benefit, not a restriction on
speech, heightened scrutiny is unwarranted
When federal trademark registration is refused under Section 1052(c), no speech is restricted; the refusal
results only in the withholding of certain benefits without regard to viewpoint. The First Amendment accordingly does not require heightened scrutiny. The particular nature of the benefits that flow from federal trademark registration makes such scrutiny especially inappropriate in this context.
a. This Court has declined to apply heightened scrutiny to viewpoint-neutral conditions on government
benefits
This Court’s First Amendment precedents have long
distinguished restrictions on speech from conditions
on government benefits. That distinction follows from
the text of the Amendment, which prohibits laws
“abridging the freedom of speech.” U.S. Const. Amend. I
(emphasis added); see Ysursa v. Pocatello Educ. Ass’n,
555 U.S. 353, 355 (2009). It also reflects the recognition
that, “when the government is acting in a capacity other
than as regulator,” the “risk” that its actions “will impermissibly interfere with the marketplace of ideas is
17
sometimes attenuated.” Davenport v. Washington Educ.
Ass’n, 551 U.S. 177, 188 (2007); cf. Maher v. Roe, 432
U.S. 464, 476 (1977) (“Constitutional concerns are greatest when the State attempts to impose its will by force
of law; the State’s power to encourage actions deemed
to be in the public interest is necessarily far broader.”).
While restrictions on speech generally are subject to
heightened scrutiny under the First Amendment, see,
e.g., Reed v. Town of Gilbert, 576 U.S. 155, 163 (2015),
conditions on government benefits generally are not,
see, e.g., Regan v. Taxation With Representation of
Washington, 461 U.S. 540, 549 (1983). Instead, the government may place viewpoint-neutral conditions on the
availability of a benefit so long as those conditions are
“reasonable.” Ysursa, 555 U.S. at 355; see Brunetti, 139
S. Ct. at 2317 (Sotomayor, J., concurring in part and dissenting in part). That principle is reflected in multiple
lines of this Court’s precedent.
One line of precedent involves conditions on government monetary subsidies. When confronted with constitutional challenges to such conditions, the Court has
emphasized the distinction between restrictions on constitutionally protected activities and mere refusals to
subsidize them. See, e.g., National Endowment for the
Arts v. Finley, 524 U.S. 569, 587-588 (1998) (recognizing
that “the Government may allocate competitive funding
according to criteria that would be impermissible were
direct regulation of speech or a criminal penalty at
stake”); Rust v. Sullivan, 500 U.S. 173, 193 (1991) (recognizing the “basic difference between direct state interference with a protected activity and state encouragement of an alternative activity consonant with legislative policy”) (citation omitted). Those decisions reflect
the understanding that, because the “refusal to fund
18
protected activity, without more, cannot be equated
with the imposition of a ‘penalty’ on that activity,” Rust,
500 U.S. at 193 (citation omitted), “a legislature’s decision not to subsidize the exercise of a fundamental right
* * * is not subject to strict scrutiny,” Regan, 461 U.S.
at 549.
In Regan, for example, the Court upheld a statute
that denied tax-exempt status to organizations that engaged in substantial lobbying. 461 U.S. at 542 & n.1,
545-546, 548-551. An organization had claimed that
“Congress’s decision not to subsidize its lobbying violate[d] the First Amendment.” Id. at 545. The Court
declined to apply strict scrutiny, explaining that “Congress ha[d] not infringed any First Amendment rights
or regulated any First Amendment activity,” but rather
“ha[d] simply chosen not to pay for [the organization’s]
lobbying.” Id. at 546; see id. at 548 (rejecting the suggestion that “strict scrutiny applies whenever Congress
subsidizes some speech, but not all speech”). The Court
then rejected the organization’s First Amendment challenge, finding it “not irrational” for Congress to have
declined to subsidize the organization’s lobbying efforts. Id. at 550.
A second line of precedent involves conditions on access to limited public forums (also known as nonpublic
forums). The Court has held that “a government entity
may create a forum that is limited to use by certain
groups or dedicated solely to the discussion of certain
subjects.” Pleasant Grove City v. Summum, 555 U.S.
460, 470 (2009). There are various kinds of limited public forums, which provide access to different kinds of
benefits. See, e.g., Christian Legal Soc’y Chapter of the
Univ. of Cal., Hastings Coll. of the Law v. Martinez, 561
U.S. 661, 669-670 (2010) (describing a forum whose ben-
19
efits included “use” of a “name and logo”); Rosenberger
v. Rector & Visitors of Univ. of Va., 515 U.S. 819, 830
(1995) (recognizing that some forums may exist “more
in a metaphysical than in a spatial or geographic
sense”). When conditions on access have been challenged, the Court has distinguished such conditions
from “prohibition[s]” and has declined to apply heightened scrutiny. Christian Legal Soc’y, 561 U.S. at 683;
see id. at 687 n.17 (emphasizing “the distinction between state prohibition and state support”). Instead,
the Court has held that such conditions satisfy the First
Amendment so long as they are “reasonable and viewpoint neutral.” Id. at 679; see Perry Educ. Ass’n v. Perry
Local Educators’ Ass’n, 460 U.S. 37, 49 (1983).
In Cornelius v. NAACP Legal Defense & Educational Fund, Inc., 473 U.S. 788 (1985), for instance, this
Court considered “whether the Federal Government violate[d] the First Amendment when it exclude[d] legal
defense and political advocacy organizations from participation in the Combined Federal Campaign (CFC or
Campaign), a charity drive aimed at federal employees.” Id. at 790. The Court explained that, because the
CFC was “a nonpublic forum,” id. at 806—which “by
definition is not dedicated to general debate or the free
exchange of ideas,” id. at 811—the First Amendment
required only that the government identify “reasonable” justifications for the challenged denial of access, id.
at 808 (emphasis omitted). The Court concluded that
“the Government does not violate the First Amendment
when it limits participation in the CFC in order to minimize disruption to the federal workplace, to ensure the
success of the fundraising effort, or to avoid the appearance of political favoritism without regard to the viewpoint of the excluded groups.” Id. at 813.
20
A third line of decisions has involved conditions on a
specific type of government assistance to public-sector
labor unions. See Ysursa, supra; Davenport, supra.
The relevant governmental bodies in those cases had
not transferred to the unions any of the government’s
own money. Rather, they had created mechanisms to
facilitate the unions’ collection of funds from government employees, while limiting the ways in which those
mechanisms could be used.
Davenport, for example, involved the state-conferred
power of public-sector unions “to charge government
employees agency fees.” 551 U.S. at 187-188. The plaintiff union challenged a state statute that imposed a “condition” on that “power” by “prohibiting expenditure of
a nonmember’s agency fees for election-related purposes
unless the nonmember affirmatively consent[ed].” Id.
at 184. The union argued that the statute “unconstitutionally dr[ew] distinctions based on the content of the
union’s speech.” Id. at 188. This Court disagreed, concluding that “the statute, rather than suppressing union
speech, simply declined to assist that speech by granting the unions the right to charge agency fees for election activities.” Ysursa, 555 U.S. at 361; see Davenport,
551 U.S. at 189-190. The Court therefore found strict
scrutiny inapplicable and upheld the challenged law as
a “reasonable, viewpoint-neutral limitation” on a “statebestowed entitlement.” Davenport, 551 U.S. at 189.
The Court in Ysursa similarly declined to apply strict
scrutiny to a condition on government assistance—
there, the “use” of “government payroll mechanisms for
the purpose of obtaining funds for expression.” 555
U.S. at 355. The case involved a state law that authorized deductions from a public employee’s wages to pay
union dues, but prohibited such payroll deductions for a
21
union’s political activities. Ibid. The Court held that
this content-based “limitation” on the “use” of “government payroll mechanisms” did not violate the First
Amendment. Ibid. The Court explained that, because
the statute did “not suppress political speech but simply
decline[d] to promote it through public employer
checkoffs for political activities,” id. at 361, strict scrutiny was unwarranted, see id. at 355, 358-359. Requiring
only “a rational basis to justify the ban on political payroll deductions,” the Court found the statute “justified
by the State’s interest in avoiding the reality or appearance of government favoritism or entanglement with
partisan politics.” Id. at 359.
b. Section 1052(c) is a viewpoint-neutral condition on
a government benefit, not a restriction on speech
Section 1052(c) does not restrict speech. Rather, it
simply withholds specific benefits that Congress has
chosen to confer on the owners of federally registered
trademarks. Under this Court’s precedents, heightened scrutiny is therefore unwarranted.
i. When the USPTO refuses to register a particular
trademark, “[n]o speech is being restricted; no one is
being punished.” Brunetti, 139 S. Ct. at 2303 (Roberts,
C.J., concurring in part and dissenting in part). The
trademark owner remains free to use the mark in commerce unless some other provision of law restricts or
prohibits its use. See Tam, 582 U.S. at 225 (“Without
federal registration, a valid trademark may still be used
in commerce.”); Brunetti, 139 S. Ct. at 2303 (Roberts,
C.J., concurring in part and dissenting in part) (explaining that whether certain “marks can be registered does
not affect the extent to which their owners may use
them in commerce to identify goods”); id. at 2317 (Sotomayor, J., concurring in part and dissenting in part)
22
(explaining that an owner “can use, own, and enforce his
mark regardless of whether it has been registered”).
Refusal of registration under Section 1052(c) thus does
not divest the mark owner of whatever rights the owner
would otherwise possess to use the individual’s name
without that person’s consent. See Brunetti, 139 S. Ct.
at 2305 (Breyer, J., concurring in part and dissenting in
part) (observing that “the statute does not bar anyone
from speaking”).
The fact that the USPTO refused to register respondent’s mark based on its content—i.e., because the mark
“[c]onsists of or comprises a name * * * identifying a
particular living individual” without “his written consent,” 15 U.S.C. 1052(c)—does not alter that analysis.
The USPTO’s refusal of registration does not prevent
respondent from using his mark to identify his goods
and distinguish them from the goods of others—for example, by putting the mark on his shirts’ tags. Nor does
the refusal of registration prevent respondent from using the same phrase in any other way—for example, by
putting the words in large letters across the front of his
shirts to communicate his intended political message.
Respondent is just as free to use his mark and to speak
those words as he would be if the mark were registered.
ii. The only effect of Section 1052(c) is to deny owners of a specified type of mark “certain additional benefits associated with federal trademark registration.”
Brunetti, 139 S. Ct. at 2303 (Roberts, C.J., concurring
in part and dissenting in part); see id. at 2316-2317 (Sotomayor, J., concurring in part and dissenting in part).
Those benefits include “additional protections against
infringers,” id. at 2316 (Sotomayor, J., concurring in
part and dissenting in part), that would make it easier
for owners to enforce their exclusive rights and prevent
23
others from using their marks, see p. 4, supra. Withholding those benefits does not limit respondent’s own
freedom to use his mark or to engage in whatever
speech he wishes.
To be sure, given the potential benefits of federal
trademark registration, the owner of an unregistrable
mark may feel “indirect pressure” to use an alternative
mark that would satisfy the Lanham Act’s registration
criteria. Christian Legal Soc’y, 561 U.S. at 682. But
this Court has repeatedly declined to equate such indirect pressure with the “direct restrictions on expression” that warrant heightened scrutiny. Ysursa, 555
U.S. at 360 n.2; see ibid. (“A decision not to assist fundraising that may, as a practical matter, result in fewer
contributions is simply not the same as directly limiting
expression.”); Christian Legal Soc’y, 561 U.S. at 683
(distinguishing “dangling the carrot of subsidy” from
“wielding the stick of prohibition”); Rust, 500 U.S. at
193 (“A refusal to fund protected activity, without more,
cannot be equated with the imposition of a ‘penalty’ on
that activity.”) (citation omitted).
It also bears emphasis that, even to the extent Section
1052(c) gives respondent a practical incentive to choose
a different trademark, that provision does not meaningfully discourage respondent from engaging in his preferred political speech. Consistent with the government’s
position in this case, respondent could sell shirts emblazoned with the slogan “TRUMP TOO SMALL,” while
using (e.g., on the shirts’ labels) and potentially registering a different mark to identify himself as the source
of the goods. Under that approach, respondent could not
invoke the Lanham Act provisions governing infringement of registered trademarks to prevent others from
selling shirts with the same slogan. But he could still
24
engage in the same political advocacy; the alternative
trademark would protect whatever goodwill he ultimately accumulated as a desired source of specific
goods; and the registrability of the alternative trademark would not be affected by respondent’s use of an
unconsenting individual’s name as part of the political
message on his shirts. That approach is consistent with
the values and policy objectives that both trademark
law and the First Amendment are intended to serve.
iii. Section 1052(c) thus operates as a viewpointneutral condition on a government benefit, not as a restriction on speech. For that reason, heightened scrutiny is unwarranted. See Brunetti, 139 S. Ct. at 23162317 (Sotomayor, J., concurring in part and dissenting
in part). Here, as in the cases discussed above, “Congress has not infringed any First Amendment rights or
regulated any First Amendment activity.” Regan, 461
U.S. at 546. Congress has simply chosen to withhold
“certain benefits, useful in infringement litigation,”
Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 143 S. Ct.
1578, 1584 (2023)—leaving respondent (and everyone
else) free to engage in whatever speech is otherwise
permitted by law.
c. The nature of the benefits that federal trademark
registration provides makes heightened scrutiny
particularly unwarranted
The fact that Section 1052(c) is a viewpoint-neutral
condition on a government benefit, not a restriction on
speech, is by itself a sufficient basis for declining to apply heightened scrutiny here. In addition, however, the
specific nature of the benefits that federal trademark
registration provides makes heightened scrutiny particularly anomalous in this setting. Three aspects of fed-
25
eral trademark registration reinforce the conclusion
that heightened scrutiny is unwarranted.
First, the purpose and effect of federal trademark
registration is to enhance the registrant’s ability to restrict the speech of others. As noted, a trademark gives
its owner “rights of exclusion”—i.e., rights to prevent
others from using the mark. K Mart Corp. v. Cartier,
Inc., 485 U.S. 176, 185 (1988); see p. 3, supra. Federal
trademark registration bolsters those rights by, for example, providing nationwide “constructive notice of the
registrant’s claim of ownership,” 15 U.S.C. 1072; serving as prima facie evidence of the registrant’s “exclusive
right to use the registered mark in commerce,” 15 U.S.C.
1115(a); and furnishing a basis for stopping the importation of goods that bear an infringing mark, 15 U.S.C.
1124. See p. 4, supra.
Such benefits promote the owner’s own use of the
mark only indirectly, by enhancing the owner’s ability
to prevent others from using it. Thus, “the net effect is
that the registration granted to one party may well inhibit all others from expressing the same thoughts, at
least on goods of the same type.” 1 J. Thomas McCarthy & Roger E. Schechter, The Rights of Publicity and
Privacy § 6:151 (2d ed. 2023) (McCarthy & Schechter).
Given the exclusionary purpose and effect of federal
trademark registration, it would be anomalous to subject viewpoint-neutral decisions refusing registration to
heightened scrutiny under the First Amendment.
Second, a “trademark’s ‘primary’ function” is a commercial one: to “tell[] the public who is responsible for
a product.” Jack Daniel’s, 143 S. Ct. at 1583 (citation
omitted); see San Francisco Arts & Athletics, Inc. v.
United States Olympic Comm., 483 U.S. 522, 535 (1987)
(characterizing the use of the word “Olympic” to induce
26
the sale of goods or services as “commercial speech”).
A mark’s potential to “convey [a] message” is incidental
to that function. Jack Daniel’s, 143 S. Ct. at 1583. Accordingly, “the lead criterion for registration is that the
mark ‘in fact serve as a “trademark” to identify and distinguish goods.’ ” Ibid. (quoting 3 McCarthy § 19:10). If
what the applicant seeks to register “fails to function as
a mark,” it cannot be registered, regardless of any message it would otherwise convey. TMEP § 1202.04; see
D.C. One Wholesaler, Inc. v. Chien, 120 U.S.P.Q.2d
1710, 2016 WL 7010638, at *7 (T.T.A.B. Nov. 9, 2016)
(finding that “I ♥ DC” did not function as a mark for
bags, clothing, and other goods because the phrase
“does not create the commercial impression of a source
indicator, even when displayed on a hangtag or label”).
Because conveying a message is only incidental to
“what a trademark is and does,” Jack Daniel’s, 143 S. Ct.
at 1583, any “risk” that decisions refusing registration
“will impermissibly interfere with the marketplace of
ideas” is highly “attenuated,” Davenport, 551 U.S. at
188. Even in cases involving actual speech restrictions,
the Court has applied less demanding scrutiny where
commercial speech is involved. See San Francisco Arts
& Athletics, 483 U.S. at 535 (“Commercial speech ‘receives a limited form of First Amendment protection.’ ”)
(citation omitted). A trademark’s commercial function
likewise reinforces the suitability of more deferential
review when, as here, the government has merely refused to provide a benefit on viewpoint-neutral grounds.
And as explained above, respondent’s intent to sell products bearing the name of an unconsenting individual
does not prevent him from registering, as a source identifier for those goods, a different mark that satisfies the
Lanham Act’s registration criteria. See pp. 23-24, supra.
27
Third, the use of content-based criteria to determine
which marks may be registered is an “inherent and inescapable” part of any trademark-registration program.
Perry, 460 U.S. at 49. If the federal government is to
maintain such a program at all, the USPTO must be able
to distinguish what is registrable from what is not, based
at least in part on the content of particular marks. See
Brunetti, 139 S. Ct. at 2306 (Breyer, J., concurring in
part and dissenting in part) (observing that rules “governing trademark registration ‘inevitably involve content
discrimination’ ”) (citation omitted). Thus, each of Section 1052’s registration criteria references the content
of the mark that the applicant seeks to register. See,
e.g., 15 U.S.C. 1052(a) (mandating refusal of registration of “deceptive” marks); 15 U.S.C. 1052(b) (mandating refusal to register marks that consist of or comprise
“the flag or coat of arms or other insignia of the United
States, or of any State or municipality, or of any foreign
nation, or any simulation thereof ”); 15 U.S.C. 1052(d)
(mandating refusal to register marks that are likely “to
cause confusion”); 15 U.S.C. 1052(e) (mandating refusal
to register marks that are “merely descriptive”).
In reviewing First Amendment challenges to conditions on access to limited public forums, this Court has
recognized that application of strict scrutiny “would, in
practical effect, invalidate a defining characteristic of
[such] forums—the State may ‘reserve them for certain
groups.’” Christian Legal Soc’y, 561 U.S. at 681 (brackets and citation omitted). Likewise here, across-theboard application of heightened scrutiny to contentbased trademark-registration criteria, including registration criteria that are viewpoint-neutral, would threaten
to invalidate a defining characteristic of any trademarkregistration program. Just as content-based distinctions
28
are “[i]mplicit in the concept of the nonpublic forum,”
Perry, 460 U.S. at 49, so too are they intrinsic to any
trademark-registration program. For that reason as
well, heightened scrutiny is particularly unwarranted.
See United States v. American Library Ass’n, 539 U.S.
194, 204-205 (2003) (plurality opinion) (finding “heightened judicial scrutiny” “incompatible” with the “contentbased judgments” that a public library must make “in
selecting the material it provides to its patrons”).
2. Congress acted reasonably in denying the benefits of
federal trademark registration to the marks covered
by Section 1052(c)
Because Section 1052(c) is a viewpoint-neutral condition on a government benefit, and because the nature
of federal trademark registration renders heightened
scrutiny particularly unwarranted, Section 1052(c) need
only have a “reasonable” basis. Brunetti, 139 S. Ct. at
2317 (Sotomayor, J., concurring in part and dissenting
in part); see Ysursa, 555 U.S. at 355; Cornelius, 473 U.S.
at 808; Regan, 461 U.S. at 550; p. 17, supra. The government’s justifications readily satisfy that standard.
a. A name is an identifier that belongs to the individual it identifies. See 1 McCarthy & Schechter § 2:5
(“There is probably nothing so strongly intuited as the
notion that our identities are ours.”). Commercial actors
who use marks that include another individual’s name,
without that individual’s consent, thus exploit something
that is not theirs, for their own commercial benefit. See
W. Page Keeton et al., Prosser and Keeton on the Law
of Torts § 117, at 851-852 (5th ed. 1984) (Keeton).
Such use of another individual’s identity has long
been viewed as a form of commercial appropriation. See
John Anthony, Inc. v. Fashions by John Anthony, Inc.,
209 U.S.P.Q. 517, 1980 WL 39056, at *10 (T.T.A.B. Dec.
29
30, 1980). Courts and commentators originally regarded
such appropriation as an “invasion of privacy.” Keeton
§ 117, at 851. But over time, the unlicensed use of another
person’s name or likeness for commercial purposes came
to be viewed as a violation of “the right of publicity”—
“the inherent right of every human being to control the
commercial use of his or her identity.” 1 McCarthy &
Schechter § 1.3; see id. § 1.4 (describing the development
of “legal recognition of publicity and privacy rights”).
b. Section 1052(c) is grounded in that historical tradition. See In re Hoefflin, 97 U.S.P.Q.2d 1174, 2010 WL
5191373, at *1 (T.T.A.B. Dec. 10, 2010) (explaining that
Section 1052(c) was “intended to protect the intellectual
property right of privacy and publicity that a living person has in his/her identity”); Martin, 1979 WL 24811, at
*2 (explaining that Section 1052(c) was “intended to
protect one who, for valid reasons, could expect to suffer
damage from another’s trademark use of his name”).
Unlike its historical antecedents, however, Section
1052(c) does not prohibit the use of marks that consist
of or comprise a name identifying a particular living individual without that individual’s consent. Rather, Congress has simply determined that the government should
“refrain[] from lending its ancillary support” to the use
of such marks. Brunetti, 139 S. Ct. at 2317 (Sotomayor,
J., concurring in part and dissenting in part). As explained above, registration enhances the trademark
owner’s ability to prevent competing uses of the owner’s
mark by, inter alia, invoking more favorable rules of
decision in any infringement litigation. See p. 4, supra.
Congress’s decision to withhold those advantages for
marks covered by Section 1052(c) respects the values
that historically have underlain common-law rights of
publicity, without imposing any restriction on speech.
30
c. Congress also may legitimately decide that the
government should not associate itself with marks that
commercially exploit an unconsenting individual’s identity. To be sure, “[t]rademarks are private, not government, speech.” Tam, 582 U.S. at 239. But the government’s association with a registered mark is an integral
feature of the trademark-registration program.
The USPTO records registered marks on the
agency’s official register and lists them in official government publications. See 15 U.S.C. 1051(a)(1), 1057(a),
1062, 1091; USPTO, Trademark Official Gazette, https://
www.uspto.gov/learning-and-resources/official-gazette/
trademark-official-gazette-tmog. The agency also issues, “in the name of the United States,” 15 U.S.C.
1057(a), certificates of registration that are transmitted
to other countries and to the World Intellectual Property Organization to facilitate registration and enforcement abroad, see Paris Convention for the Protection of
Industrial Property art. 6quinquies, done July 14, 1967, 21
U.S.T. 1643-1645, 828 U.N.T.S. 331, 333; see also 15
U.S.C. 1141b (Madrid Protocol). And mark owners may
“give notice” that their marks are registered by displaying them with the ® symbol or with “the words ‘Registered in U.S. Patent and Trademark Office’ or ‘Reg.
U.S. Pat. & Tm. Off.’ ” 15 U.S.C. 1111.
In other cases involving conditions on government
benefits, this Court has recognized a government’s reasonable interest in avoiding not just the “reality,” but
also the “appearance,” of official endorsement. Ysursa,
555 U.S. at 359. In Ysursa, for example, the Court held
that the State’s “ban on political payroll deductions”
was “justified by the State’s interest in avoiding the reality or appearance of government favoritism or entanglement with partisan politics.” Ibid. In Cornelius, the
31
Court similarly held that the exclusion of political advocacy organizations from a nonpublic forum could be justified by an interest in “avoiding the appearance of political favoritism.” 473 U.S. at 809.
A similar interest justifies the refusal to register
marks that consist of or comprise names identifying particular living individuals without those individuals’ consent. Although the government’s association with a registered mark does not convert that mark into government speech, the public may still perceive that association as evidence of government approval—particularly
when the ® symbol (or similar notation) appears next to
the mark. And while some risk of that perception is an
inherent consequence of a functional registration program, Congress may reasonably draw the line at efforts
to assert an exclusive right in an unconsenting person’s
name. Cf. Brunetti, 139 S. Ct. at 2303 (Roberts, C.J.,
concurring in part and dissenting in part) (recognizing
that the government “has an interest in not associating
itself with trademarks whose content is obscene, vulgar,
or profane”); id. at 2317 (Sotomayor, J., concurring in
part and dissenting in part) (“Apart from any interest
in regulating commerce itself, the Government has an
interest in not promoting certain kinds of speech,
whether because such speech could be perceived as suggesting governmental favoritism or simply because the
Government does not wish to involve itself with that
kind of speech.”).
d. Finally, the government has a reasonable interest
in not promoting “misleading or deceptive sourceidentifiers.” In re ADCO Indus. – Techs., L.P., 2020
U.S.P.Q.2d 53786, 2020 WL 730361, at *13 (T.T.A.B.
Feb. 11, 2020). Marks that consist of or comprise names
“identifying * * * particular living individual[s],” 15
32
U.S.C. 1052(c), often may be perceived as suggesting
those individuals’ sponsorship of or affiliation with the
relevant commercial goods. By making registration
contingent on the identified individual’s consent, Section 1052(c) ensures that consumers will not draw that
inference in error.
To be sure, Section 1052(a) separately directs the
USPTO to refuse registration of marks that consist of
or comprise “matter which may * * * falsely suggest a
connection with persons, living or dead.” 15 U.S.C.
1052(a). And the USPTO often invokes Section 1052(a)
alongside Section 1052(c) in refusing registration of
marks that include the names of particular living individuals without their consent. See, e.g., ADCO, 2020 WL
730361, at *4-*9; In re Sauer, 27 U.S.P.Q.2d 1073, 1993
WL 236534, at *2-*3 (T.T.A.B. Apr. 23, 1993) (invoking
both Section 1052(a) and Section 1052(c) as bases for refusing registration of a mark containing BO, used in
connection with a sports ball that “appears to be a combination of a baseball and a football,” because use of the
mark would create the impression that Bo Jackson, a
famous athlete who played both football and baseball,
was associated with the goods). But those decisions
simply show that the use of such names often does create “source deception.” ADCO, 2020 WL 730361, at *13.
Source identification is a trademark’s primary function,
see Jack Daniel’s, 143 S. Ct. at 1583, and the government may reasonably decline to promote a class of
marks that risk undermining that function.
As the court below recognized, the specific message
about former President Trump that respondent’s own
slogan conveys would not likely lead consumers to infer
the former President’s sponsorship or affiliation here.
See Pet. App. 15a (“No plausible claim could be or has
33
been made that the disputed mark suggests that President Trump has endorsed [respondent’s] product.”). In
the mine run of its applications, however, Section
1052(c) usefully complements Section 1052(a) by identifying a class of marks that pose a particular risk of misleading consumers about the source of goods. And even
where such confusion is demonstrably unlikely, Section
1052(c) reasonably furthers the distinct governmental
interests described above. See pp. 28-31, supra.
C. The Court Of Appeals Erred In Declaring Section 1052(c)
Unconstitutional As Applied To Marks That Criticize
Government Officials Or Public Figures
The court below held that Section 1052(c) violates
the First Amendment as applied to a category of
marks—those that contain “speech critical of government officials or public figures.” Pet. App. 20a. That
holding rested, however, on the court’s erroneous view
that Section 1052(c) is a restriction on speech. Because
Section 1052(c) does not restrict speech, the court’s asapplied holding has no sound basis.
1. The court of appeals erred in characterizing Section
1052(c) as a restriction on speech
At the outset of its decision, the court of appeals
characterized Section 1052(c) as a restriction on speech.
See Pet. App. 1a, 5a-10a. That characterization then
drove the rest of the court’s analysis. The court found
heightened scrutiny to be appropriate on the theory
that Section 1052(c) was a “content-based restriction[]”
on speech, id. at 9a; it framed the issue under heightened scrutiny as whether the government has a sufficient “interest in limiting speech” that “involves criticism of government officials,” id. at 11a; and it ultimately concluded that the government “does not have”
34
a sufficient “interest in restricting speech critical of
government officials or public figures in the trademark
context,” id. at 20a.
As explained above, however, Section 1052(c) does
not impose a restriction on speech, but instead establishes a condition on “the ancillary benefits that come
with [federal trademark] registration.” Brunetti, 139
S. Ct. at 2317 (Sotomayor, J., concurring in part and dissenting in part). The court of appeals’ erroneous premise led it to apply the wrong framework for evaluating a
viewpoint-neutral bar on trademark registration.
The court of appeals’ stated reasons for treating
Section 1052(c) as a restriction on speech do not withstand scrutiny. The court stated that Section 1052(c)
“disfavors” marks that include a name identifying a particular living individual without that individual’s consent. Pet. App. 5a-6a (citation omitted). But the only
“disadvantage” that the court identified was the denial
of the benefits that come with federal trademark registration. Id. at 6a. The court did not identify any respect
in which Section 1052(c) restricts speech. To the contrary, the court acknowledged that the provision “does
not prevent [respondent] from communicating his message outright.” Ibid.
The court of appeals also dismissed as irrelevant this
Court’s decisions applying First Amendment principles
to conditions on government subsidies and conditions on
access to limited public forums. Pet. App. 6a-8a. The
court of appeals was correct in observing that the benefits of federal trademark registration are not precisely
equivalent to the benefits that were at issue in those
prior cases. Those decisions did not turn, however, on
the exact nature of the benefits that particular govern-
35
ment programs conferred. Rather, they turned on the
nature of the right that the First Amendment protects.
By its terms, “[t]he First Amendment prohibits government from ‘abridging the freedom of speech.’ ”
Ysursa, 555 U.S. at 355. By contrast, when the government decides to subsidize or otherwise affirmatively assist particular types of private communication, its refusal
to assist other speech is ordinarily constitutional so long
as its selection criteria are reasonable and viewpointneutral. See, e.g., id. at 358 (explaining that, while “[t]he
First Amendment * * * protects the right to be free
from government abridgment of speech,” the government “is not required to assist others in funding the expression of particular ideas”). The precedents discussed
at pp. 16-21, supra, thus are not properly understood to
establish discrete, ad hoc exceptions to the First Amendment’s literal command. Rather, the Court has adhered
to the Amendment’s plain text by applying, to a variety
of government benefits and programs, the same basic
distinction between governmental abridgment of freespeech rights and the government’s failure to assist private expression.
To be sure, this Court has applied a different analytic
framework, and more demanding First Amendment
scrutiny, to laws that discriminate based on viewpoint.
See, e.g., Rosenberger, 515 U.S. at 829 (“Viewpoint discrimination is * * * an egregious form of content discrimination.”). In particular, the Court has treated governmental viewpoint discrimination as “presumptively
unconstitutional,” Brunetti, 139 S. Ct. at 2299 (citation
omitted), even when the government employs viewpointbased criteria solely to determine whether to assist particular speech. See, e.g., Christian Legal Soc’y, 561 U.S.
at 679 (recognizing that any condition on access to a lim-
36
ited public forum “must be reasonable and viewpoint
neutral”). The Court’s decisions in Tam and Brunetti
ultimately turned on the particularly disfavored character of viewpoint-based laws. See Brunetti, 139 S. Ct. at
2302 n.* (declining to “say anything about how to evaluate viewpoint-neutral restrictions on trademark registration” because the provision at issue in that case was
not viewpoint-neutral); pp. 11-14, supra.
By contrast, where, as here, the government’s decision whether to assist a particular speaker is governed
by viewpoint-neutral criteria, the Court has viewed refusals to provide varied forms of assistance as fundamentally different from restrictions on speech. See
pp. 16-21, supra. The Lanham Act’s registration scheme
provides “an opportunity to include one’s trademark on
a list and thereby secure the ancillary benefits that
come with registration.” Brunetti, 139 S. Ct. at 2317
(Sotomayor, J., concurring in part and dissenting in
part). Section 1052(c) makes those benefits unavailable
for a specified class of marks, but it does not discriminate based on viewpoint, and it does not limit anyone’s
right to speak. See id. at 2303 (Roberts, C.J., concurring in part and dissenting in part) (explaining that the
Lanham Act’s bar on registration of “scandalous”
marks “merely denie[s] certain additional benefits associated with federal trademark registration”). The court
of appeals therefore erred in characterizing Section
1052(c) as a restriction on speech and in subjecting it to
heightened scrutiny.
2. Because Section 1052(c) does not restrict speech, the
court of appeals’ as-applied holding finds no footing
in the First Amendment
As explained above, the court of appeals found Section 1052(c) unconstitutional as applied to marks that
37
criticize government officials or public figures because
the court viewed that provision as restricting private
speech. When Section 1052(c) is properly viewed as a
condition on a government benefit, the errors in the
court’s reasoning and as-applied holding are apparent.
a. In support of its as-applied holding, the court of
appeals emphasized the importance of “ ‘speech concerning public affairs,’” and specifically speech involving “criticism of government officials.” Pet. App. 10a11a (citation omitted). Such speech indisputably lies “at
the heart of the First Amendment.” Id. at 11a. But while
“[t]he First Amendment prohibits government from
‘abridging the freedom of speech,’” it “does not confer
an affirmative right” to government assistance, even for
speech concerning public affairs or criticizing government officials. Ysursa, 555 U.S. at 355.
The decisions discussed above reflect that principle.
The parties who challenged conditions on government
benefits in Regan, Cornelius, Davenport, and Ysursa
were engaged in political speech. See Ysursa, 555 U.S.
at 355 (“political speech”); Davenport, 551 U.S. at 182
(“influenc[ing] an election” or “operat[ing] a political
committee”) (citation omitted); Cornelius, 473 U.S. at
795 (“political activity or advocacy, lobbying, or litigation”) (citation omitted); Regan, 461 U.S. at 542 (“attempting to influence legislation”). The Court in those
cases did not question the plaintiffs’ right to engage in
their preferred speech without government interference. Yet the Court in each case held that, consistent
with the First Amendment, the relevant federal or state
actor could reasonably “decline[] to promote that
speech.” Ysursa, 555 U.S. at 355; see Davenport, 551
U.S. at 190 (citing Regan for the principle that the
“First Amendment does not require the government to
38
enhance a person’s ability to speak”); Cornelius, 473
U.S. at 809 (“The First Amendment does not demand
unrestricted access to a nonpublic forum merely because use of that forum may be the most efficient means
of delivering the speaker’s message.”); Regan, 461 U.S.
at 546 (rejecting the “notion that First Amendment
rights are somehow not fully realized unless they are
subsidized by the State”) (citation omitted). The Court
so held even though the laws at issue, unlike Section
1052(c), specifically excluded political speech from government benefits. See Ysursa, 555 U.S. at 356; Davenport, 551 U.S. at 182; Cornelius, 473 U.S. at 795; Regan,
461 U.S. at 542.
b. The court of appeals also relied on various lowercourt decisions that have addressed the extent to which
the First Amendment protects the use of another person’s identity without that person’s consent. Pet. App.
16a-19a. Each of those decisions, however, addressed
the constitutionality of restrictions on such use. See
Hart v. Electronic Arts, Inc., 717 F.3d 141, 148-149 (3d
Cir. 2013), cert. dismissed, 573 U.S. 989 (2014); ETW
Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 937 (6th Cir.
2003); Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 968 (10th Cir. 1996); Titan
Sports, Inc v. Comics World Corp., 870 F.2d 85, 87-88
(2d Cir. 1989); Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 804 (Cal. 2001), cert. denied, 534
U.S. 1078 (2002); Lohan v. Take-Two Interactive Software, Inc., 97 N.E.3d 389, 393-394 (N.Y. 2018); Paulsen
v. Personality Posters, Inc., 299 N.Y.S.2d 501, 508-509
(Sup. Ct. 1968). Whatever the merits of those decisions,
they shed no meaningful light on the constitutionality of
Section 1052(c), which is not a restriction on speech, but
a condition on a government benefit. See, e.g., Rust, 500
39
U.S. at 201 (“The Government has no constitutional
duty to subsidize an activity merely because the activity
is constitutionally protected.”).
c. Finally, the court of appeals expressed the view
that “the right of publicity cannot shield public figures
from criticism.” Pet. App. 19a. But Section 1052(c) does
not shield anyone from criticism since the USPTO’s refusal of registration does not constrain respondent’s
ability to engage in any form of public commentary.
In fact, it is the registration of marks like respondent’s
—not the refusal to register them—that would potentially “chill speech.” Pet. App. 8a (citation omitted). After all, a trademark gives its owner the right to “prevent[] others from using the mark.” B&B Hardware,
Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142 (2015).
And registration bolsters those “rights of exclusion,”
K Mart Corp., 485 U.S. at 185, by giving owners “additional protections against infringers,” Brunetti, 139
S. Ct. at 2316 (Sotomayor, J., concurring in part and dissenting in part); see p. 25, supra.
Thus, while the court of appeals expressed concern
about respondent’s free-speech right to criticize public
officials, the court’s decision makes it easier for individuals like respondent to invoke federal enforcement
mechanisms to restrict the speech of others. To be sure,
that speech-impairing effect is a usual and ordinarily
unproblematic consequence of federal trademark registration, and of trademark-protection laws more generally. Cf. pp. 3-4, supra. It would be anomalous to conclude, however, that respondent has a First Amendment right to restrict others’ speech and to obtain the
government’s assistance in that endeavor, notwithstanding Congress’s decision to exclude respondent’s
mark from eligibility for federal registration. And it is
40
particularly strange to treat the political nature of respondent’s message as a factor supporting his claim to
such a right. See 1 McCarthy & Schechter § 6:151 (“The
irony of th[e] [Federal Circuit’s] ruling [in this case] is
that it means that no one else can put the same or similar message on a shirt without risking potential liability
for trademark infringement. * * * This appears to be
suffocating the First Amendment in the name of saving
it.”). Because Section 1052(c) does not abridge respondent’s freedom of speech, and because the First Amendment does not confer any right to restrict the speech of
his competitors, the court’s as-applied holding has no
sound basis in the Constitution.
CONCLUSION
The judgment of the court of appeals should be
reversed.
Respectfully submitted.
DAVID L. BERDAN
General Counsel
THOMAS W. KRAUSE
Solicitor
CHRISTINA J. HIEBER
MARY BETH WALKER
Associate Solicitors
U.S. Patent and Trademark
Office
JULY 2023
ELIZABETH B. PRELOGAR
Solicitor General
BRIAN M. BOYNTON
Principal Deputy Assistant
Attorney General
MALCOLM L. STEWART
Deputy Solicitor General
FREDERICK LIU
Assistant to the Solicitor
General
DANIEL TENNY
JOSHUA M. SALZMAN
LEIF OVERVOLD
Attorneys
APPENDIX
TABLE OF CONTENTS
Page
Appendix — Statutory provisions:
15 U.S.C. 1051……………………………………….. 1a
15 U.S.C. 1052……………………………………….. 7a
15 U.S.C. 1057……………………………………… 10a
15 U.S.C. 1065……………………………………… 14a
15 U.S.C. 1072……………………………………… 15a
15 U.S.C. 1111……………………………………… 16a
15 U.S.C. 1115……………………………………… 16a
15 U.S.C. 1124……………………………………… 19a
15 U.S.C. 1127……………………………………… 20a
APPENDIX
1.
15 U.S.C. 1051 provides:
Application for registration; verification
(a)
Application for use of trademark
(1) The owner of a trademark used in commerce
may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form
as may be prescribed by the Director, and such number
of specimens or facsimiles of the mark as used as may
be required by the Director.
(2) The application shall include specification of the
applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s
first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the
mark.
(3) The statement shall be verified by the applicant
and specify that—
(A) the person making the verification believes
that he or she, or the juristic person in whose behalf
he or she makes the verification, to be the owner of
the mark sought to be registered;
(B) to the best of the verifier’s knowledge and
belief, the facts recited in the application are accurate;
(C)
the mark is in use in commerce; and
(1a)
2a
(D) to the best of the verifier’s knowledge and
belief, no other person has the right to use such mark
in commerce either in the identical form thereof or in
such near resemblance thereto as to be likely, when
used on or in connection with the goods of such other
person, to cause confusion, or to cause mistake, or to
deceive, except that, in the case of every application
claiming concurrent use, the applicant shall—
(i) state exceptions to the claim of exclusive
use; and
(ii) shall 1 specify, to the extent of the verifier’s knowledge—
(I)
any concurrent use by others;
(II) the goods on or in connection with
which and the areas in which each concurrent
use exists;
(III) the periods of each use; and
(IV) the goods and area for which the applicant desires registration.
(4) The applicant shall comply with such rules or
regulations as may be prescribed by the Director. The
Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date
herein.
(b)
Application for bona fide intention to use trademark
(1) A person who has a bona fide intention, under
circumstances showing the good faith of such person, to
use a trademark in commerce may request registration
1
So in original.
The word “shall” probably should not appear.
3a
of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified
statement, in such form as may be prescribed by the Director.
(2) The application shall include specification of the
applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
(3) The statement shall be verified by the applicant
and specify—
(A) that the person making the verification believes that he or she, or the juristic person in whose
behalf he or she makes the verification, to be entitled
to use the mark in commerce;
(B) the applicant’s bona fide intention to use the
mark in commerce;
(C) that, to the best of the verifier’s knowledge
and belief, the facts recited in the application are accurate; and
(D) that, to the best of the verifier’s knowledge
and belief, no other person has the right to use such
mark in commerce either in the identical form
thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods
of such other person, to cause confusion, or to cause
mistake, or to deceive.
Except for applications filed pursuant to section 1126 of
this title, no mark shall be registered until the applicant
has met the requirements of subsections (c) and (d) of
this section.
4a
(4) The applicant shall comply with such rules or
regulations as may be prescribed by the Director. The
Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date
herein.
(c)
Amendment of application under subsection (b) to
conform to requirements of subsection (a)
At any time during examination of an application
filed under subsection (b), an applicant who has made
use of the mark in commerce may claim the benefits of
such use for purposes of this chapter, by amending his
or her application to bring it into conformity with the
requirements of subsection (a).
(d)
Verified statement that trademark is used in
commerce
(1) Within six months after the date on which the
notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under
subsection (b) of this section, the applicant shall file in
the Patent and Trademark Office, together with such
number of specimens or facsimiles of the mark as used
in commerce as may be required by the Director and
payment of the prescribed fee, a verified statement that
the mark is in use in commerce and specifying the date
of the applicant’s first use of the mark in commerce and
those goods or services specified in the notice of allowance on or in connection with which the mark is used in
commerce. Subject to examination and acceptance of
the statement of use, the mark shall be registered in the
Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in
the statement of use for which the mark is entitled to
5a
registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through
(e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the
mark is registered.
(2) The Director shall extend, for one additional
6-month period, the time for filing the statement of use
under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under
the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the
time for filing the statement of use under paragraph (1)
for periods aggregating not more than 24 months, pursuant to written request of the applicant made before
the expiration of the last extension granted under this
paragraph. Any request for an extension under this
paragraph shall be accompanied by a verified statement
that the applicant has a continued bona fide intention to
use the mark in commerce and specifying those goods or
services identified in the notice of allowance on or in connection with which the applicant has a continued bona
fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for
determining what constitutes good cause for purposes of
this paragraph.
(3) The Director shall notify any applicant who files
a statement of use of the acceptance or refusal thereof
and, if the statement of use is refused, the reasons for
6a
the refusal.
use.
An applicant may amend the statement of
(4) The failure to timely file a verified statement of
use under paragraph (1) or an extension request under
paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the
Director that the delay in responding was unintentional,
in which case the time for filing may be extended, but
for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
(e)
Designation of resident for service of process and
notices
If the applicant is not domiciled in the United States
the applicant may designate, by a document filed in the
United States Patent and Trademark Office, the name
and address of a person resident in the United States on
whom may be served notices or process in proceedings
affecting the mark. Such notices or process may be
served upon the person so designated by leaving with
that person or mailing to that person a copy thereof at
the address specified in the last designation so filed. If
the person so designated cannot be found at the address
given in the last designation, or if the registrant does not
designate by a document filed in the United States Patent and Trademark Office the name and address of a
person resident in the United States on whom may be
served notices or process in proceedings affecting the
mark, such notices or process may be served on the Director.
(f )
Third-party submission of evidence
A third party may submit for consideration for inclusion in the record of an application evidence relevant to
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a ground for refusal of registration. The third-party
submission shall identify the ground for refusal and include a concise description of each piece of evidence submitted in support of each identified ground for refusal.
Not later than 2 months after the date on which the submission is filed, the Director shall determine whether
the evidence should be included in the record of the application. The Director shall establish by regulation
appropriate procedures for the consideration of evidence submitted by a third party under this subsection
and may prescribe a fee to accompany the submission.
If the Director determines that the third-party evidence
should be included in the record of the application, only
the evidence and the ground for refusal to which the evidence relates may be so included. Any determination
by the Director whether or not to include evidence in the
record of an application shall be final and non-reviewable,
and a determination to include or to not include evidence
in the record shall not prejudice any party’s right to
raise any issue and rely on any evidence in any other
proceeding.
2.
15 U.S.C. 1052 provides:
Trademarks registrable on principal register; concurrent
registration
No trademark by which the goods of the applicant
may be distinguished from the goods of others shall be
refused registration on the principal register on account
of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or
scandalous matter; or matter which may disparage or
falsely suggest a connection with persons, living or dead,
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institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute; or a geographical indication
which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods
and is first used on or in connection with wines or spirits
by the applicant on or after one year after the date on
which the WTO Agreement (as defined in section
3501(9) of title 19) enters into force with respect to the
United States.
(b) Consists of or comprises the flag or coat of arms
or other insignia of the United States, or of any State or
municipality, or of any foreign nation, or any simulation
thereof.
(c) Consists 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 the widow.
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the
United States by another and not abandoned, as to be
likely, when used on or in connection with the goods of
the applicant, to cause confusion, or to cause mistake, or
to deceive: Provided, That if the Director determines
that confusion, mistake, or deception is not likely to result from the continued use by more than one person of
the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the
goods on or in connection with which such marks are
used, concurrent registrations may be issued to such
persons when they have become entitled to use such
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marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the
applications pending or of any registration issued under
this chapter; (2) July 5, 1947, in the case of registrations
previously issued under the Act of March 3, 1881, or
February 20, 1905, and continuing in full force and effect
on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date
of any pending application or a registration shall not be
required when the owner of such application or registration consents to the grant of a concurrent registration to
the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the
mode or place of use of the mark or the goods on or in
connection with which such mark is registered to the respective persons.
(e) Consists of a mark which (1) when used on or in
connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when
used on or in connection with the goods of the applicant
is primarily geographically descriptive of them, except
as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is
primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
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(f ) Except as expressly excluded in subsections (a),
(b), (c), (d), (e)(3), and (e)(5) of this section, nothing in
this chapter shall prevent the registration of a mark
used by the applicant which has become distinctive of
the applicant’s goods in commerce. The Director may
accept as prima facie evidence that the mark has become
distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on
which the claim of distinctiveness is made. Nothing in
this section shall prevent the registration of a mark which,
when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of
this title, may be refused registration only pursuant to a
proceeding brought under section 1063 of this title. A
registration for a mark which would be likely to cause
dilution by blurring or dilution by tarnishment under
section 1125(c) of this title, may be canceled pursuant to
a proceeding brought under either section 1064 of this
title or section 1092 of this title.
3.
15 U.S.C. 1057 provides:
Certificates of registration
(a)
Issuance and form
Certificates of registration of marks registered upon
the principal register shall be issued in the name of the
United States of America, under the seal of the United
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States Patent and Trademark Offic…