First Amendment Values in Trump T-Shirt Trademark Case

The Supreme Court's decision in Matal v. Tam established that refusing to register disparaging trademarks constitutes viewpoint discrimination under the First Amendment, but the remaining provisions of Section 2(a) of the Lanham Act, including the immoral or scandalous clause, remain subject to constitutional scrutiny; the key distinction lies in whether the prohibited speech serves an expressive purpose (requiring strict scrutiny) or merely contains vulgar content (potentially subject to less strict scrutiny as commercial speech).

In Iancu v. Brunetti (2019), the Supreme Court unanimously held that Section 2(a) of the Lanham Act's prohibition on registering 'immoral' or 'scandalous' marks is facially invalid under the First Amendment, finding it constitutes viewpoint discrimination that cannot survive strict scrutiny; the Court distinguished this provision from the disparagement clause in Matal v. Tam (2017) by noting that while both involve viewpoint-based restrictions, the scandalous provision's broad and vague language creates unacceptable uncertainty in trademark examination, whereas the disparagement clause could be narrowly interpreted to apply only to marks that actually disparage specific groups, making it constitutionally permissible.

The Supreme Court's unanimous decisions in Matal v. Tam (2017) and Brunetti v. USPTO (2019) established that federal trademark registration cannot be denied based on viewpoint discrimination, as such restrictions violate the First Amendment; these cases clarified that trademark registration is merely a procedural tool that amplifies existing trademark rights rather than creating them, and that offensive or controversial trademarks remain protected commercial speech regardless of their potential to offend.

In June 2019, the U.S. Supreme Court ruled that the Lanham Act's Section 2(a) prohibition on federal registration of 'immoral or scandalous' trademarks violates First Amendment free speech protections, finding that the statute constitutes viewpoint discrimination by allowing registration of marks that champion society's sense of rectitude and morality while refusing marks that denigrate those concepts, and that the government cannot be trusted to apply the statute narrowly going forward.

In Matal v Tam (2017), the U.S. Supreme Court unanimously ruled that the federal law prohibiting trademarks that 'disparage' any person living or dead is unconstitutional under the First Amendment, holding that such a law violates free speech protections by being overly broad and requiring viewpoint-based discrimination; the Court determined that the government cannot prohibit speech simply because it finds the message offensive, and that the law fails strict scrutiny because it prohibits more speech than necessary to achieve any legitimate government interest.

In parody cases, what the trademark owner is complaining about is not the designation of source but the speech—the parody, comparison, and joke. The circuits developed the Rogers test to protect expressive works generally and keep the threat of extended litigation from silencing speech, particularly when well-heeled celebrities go after parody creators. The Rogers test functions best as a screen that takes out all expressive works at the beginning so you never have to apply the full Lanham Act multi-factor test. This is preferred over having the same test applied at the multi-factor stage because the rough and tumble open-ended inquiry itself chills speech. The distinction between utilitarian goods and expressive works is a non-existent standard—what matters is whether the primary purpose is communication or utility. As recognized in Campbell v. Acuff-Rose Music, Inc., the reality of parodies is that people don't license lampoons of their own products. The key is whether the trademark use serves a communicative purpose related to the product's message rather than artistic relevance. Under Section 1127 of the Lanham Act, non-commercial use means something not bought and sold in commerce (defined as the ordinary course of trade). This makes the non-commercial exclusion problematic because everything is for sale in modern commerce. The legislative history and textual analysis point to the commercial speech doctrine, teaching that something is only commercial if it does no more than propose a transaction.

In Jack Daniel's Properties, Inc. v. VIP Products LLC (2023), the Supreme Court unanimously ruled that parody products like the 'Bad Spaniels' chew toy, which uses Jack Daniel's trademark elements humorously, cannot claim First Amendment protection under the Rogers test because they serve as source identifiers rather than purely expressive works; the Court clarified that while parody is protected speech, it must not function primarily to indicate the product's origin, distinguishing between artistic expression and commercial source identification.

The Supreme Court ruled that disparaging trademark prohibitions violate the First Amendment because they are not viewpoint neutral. Trademark registration requires actual commercial use, not just ornamental or expressive display. There is no legal distinction between expressive use and commercial use of phrases or logos—all constitute trademark use. Brands are inherently expressive because they evoke specific concepts in consumers' minds, and this expressiveness is separate from but not mutually exclusive with their commercial function.

The USPTO, responsible for overseeing the entire American trademark system, normally holds exactly seven trademarks: its own logo, its own name, and a consumer education campaign called 'Buy Smart.' The Board of Peace filing represents a significant expansion beyond official government functions. The USPTO is funded by filing fees, not taxpayer money. Real people pay $350 to protect their actual businesses. The government canceled this fee for itself for a project that isn't a business, isn't a product, and isn't a government entity. With over 500,000 pending trademark applications backlogged, real applicants waiting months to get their business names protected, the Board of Peace received two filings and a fee cancellation in less time than it takes to get a response from an internet provider.

The United States Patent and Trademark Office ruled that the Washington Redskins name is offensive and disparaging to Native Americans, canceling six NFL teams' federal trademark registrations under a federal law prohibiting offensive trademarks. The decision was based on three key factors: the term's similarity to other racial slurs, its dictionary definition as offensive since 1966 (before the 1967 trademark registration), and opposition from the National Congress of American Indians. While the ruling does not force the team to change its name, it removes trademark protection, potentially allowing others to sell Redskins paraphernalia.

The USPTO rejects trademark applications for multiple reasons: (1) Geographical location restrictions - 'American Riviera' is a common nickname for Santa Barbara, California, and adding 'Orchard' doesn't change the primary location; (2) Incomplete or inaccurate descriptions - the description indicated a letter 'O' that was unrecognizable; (3) Logo description inconsistency - the description didn't match the visual elements; (4) Procedural errors - failure to sign documents; (5) Fee non-payment - $1,382 in international registration fees were not paid. The USPTO gave a 3-month window to fix issues or face application abandonment.

After proceedings are instituted, registrants have three response options: (1) Provide evidence of use consistent with Section 45 definition; (2) Excusable non-use (only applicable to Section 44/66 Paris/Madrid registrations); (3) Deletion of challenged goods/services. Resubmitting identical specimens already in USPTO records without additional evidence is insufficient. Excusable non-use is a treaty entitlement only for Paris/Madrid registrations and does not apply to Section 1 registrants or reexamination proceedings. Section 7 amendments can preclude expungement/reexamination if filed before proceedings are instituted, but cannot be done during proceedings. Instead, registrants must notify examiners in their response that amendments were made, with expedited Section 7 examination. If deletion occurs during post-registration examination of Section 8/71 declarations, a $250 per class deletion fee applies. No deletion fee applies if deletion occurs during expungement/reexamination proceedings. Acceptable responses terminate proceedings immediately with no cancellation order. No response means immediate cancellation of challenged goods/services. Petitions for reinstatement are available for extraordinary circumstances but cannot prolong overall response periods. The TMA includes estoppel provisions preventing further proceedings on goods/services where use has been established. However, this does not bar reexamination proceedings on the same goods/services because reexamination involves whether the mark was in use as of a particular relevant date, which may differ from expungement proof requirements. The MPR requests comments on whether non-responding registrants should be flagged for later audit. The NPRM proposes amending rules to suspend proceedings when another relevant proceeding is ongoing, rather than limiting suspension to cases with the same parties. Proposed rules change from 'representation' to 'recognition' terminology since the USPTO recognizes representatives for determining authorization to act before the office, not controlling actual client agreements. Under current rules, recognition ends when application is abandoned, registration expires/cancels, or ownership changes. Proposed rules maintain recognition after these events, requiring proactive revocation documents rather than automatic termination. This change facilitates role-based access control for database login security, assigning limited roles (attorney, support, owner, public administrator) to control access to filings. The proposed rule codifies the USPTO's longstanding procedures concerning court orders canceling or affecting registrations under 15 USC 1119, requiring submission of certified copies and acting only after cases are finally determined. The USPTO implemented disincentives for maintaining inaccurate registrations: (1) A $250 per class deletion fee charged when goods/services are deleted during post-registration examination of Section 8/71 declarations; (2) Zero fee for Section 7 amendments deleting unused goods/services outside of audit contexts. To avoid fees, registrants should file accurate Section 8/71 declarations reflecting only currently used goods/services. The $125 extension fee for going beyond the three-month response period faced criticism as excessive, exceeding typical motion fees in state and federal courts. The USPTO acknowledged the need to balance fee recovery with promoting access to the IP system, especially given President Biden's emphasis on supporting small businesses which constitute 90% of US businesses and create 2/3 of new jobs. Under the TMA, expungement proceedings make three years of non-use fatal regardless of intent to resume or commence use. For Sections 44E/66A registrations, the treaty entitlement requires use within three years post-registration regardless of circumstances like licensing attempts. If not used within three years, it is subject to cancellation at the Board and expungement proceedings. The USPTO will notify both registrants and their attorneys of record for expungement proceedings as an exception to correspondence rules, ensuring both parties are aware when proceedings are filed against a registration. The Federal Circuit case law regarding standing (entitlement to statutory cause of action) applies differently in these contexts. Expungement claims brought at the TTAB are litigation, unlike ex parte proceedings before the examining operation. The new ex parte proceedings are not litigation, while TTAB litigation involving expungement claims would be litigation. Strategic considerations include whether to pursue ex parte proceedings (potentially faster resolution) or TTAB litigation (allowing coupling with additional claims and discovery).

The USPTO's role as a neutral adjudicator of trademark disputes is compromised when the agency files trademark applications on behalf of political entities. This creates a conflict of interest where the USPTO would be both the owner and the judge of any rights it has as an owner against anyone who wants to identify their organization with the word peace. This undermines the fairness and objectivity of the trademark system, which is designed to protect everyone, not just politically connected entities. The USPTO has implemented reforms to address this problem by encouraging collective action and providing clearer finality to patent validity determinations. The goal is to provide certainty and finality to patent holders while preserving the ability to challenge patents that should not have been granted.