The US Supreme Court announced Monday it will take up the trademark case Vidal v. Elster, to determine whether the application of Section 2(c) of the Lanham Act to political figures violates the First Amendment. 

The case surrounds the trademark application by Steve Elster for the phrase “Trump Too Small,” which Elster attempted to trademark for use on t-shirts. Elster’s application was denied by the US Patents and Trademarks Office and the denial was upheld by the Trademark Trial and Appeal Board for violating Section 2(c) of the Lanham Act, which bars a trademark that “Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent…”

Elster appealed the Board’s decision to the US Court of Appeals for the Federal Circuit, which ruled that the denial of the trademark infringed upon Elster’s free speech, citing Baumgartner v. United States, saying, “In particular, ‘the right to criticize public men’ is ‘[o]ne of the prerogatives of American citizenship.’” The court went on to reason that:

The government has no valid publicity interest that could overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark. As a result of the President’s status as a public official, and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech.

The court also raised doubt as to the overall constitutionality of Section 2(c) of the Lanham Act, saying:

It may be that a substantial number of section 2(c)’s applications would be unconstitutional. The statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests.

The government’s petition for a writ of certiorari criticized the appeals court’s ruling, saying, “The only effect of Section 1052(c) is to deny the owner ‘the ancillary benefits that come with registration,’ including ‘additional protections against infringers,'” citing Iancu v. Brunetti.

The so-called ‘consent clause’ of Section 2(c), which requires written consent in order to use the name of living persons in a trademark, has been controversial among intellectual property attorneys and First Amendment legal scholars for some time. In a piece for Bloomberg Law last year, prominent intellectual property attorney David G. Barker advocated for the removal of the ‘consent clause,’ arguing that, “When society is torn by ideological battles through all angles of the political spectrum, we need vigorous debate with a rainbow of views. Perhaps removing the consent clause from Section 2(c) of the Lanham Act would facilitate challenges to the status quo.”

The the ‘disparagement’ and ‘immoral/scandalous’ clauses of Section 2(a) of the Lanham Act have already been found to be unconstitutional by the Supreme Court in Brunetti and Matal v. Tam, but Section 2(c) has yet to be addressed by the Court.