Law360 Speaks to Josh Gerben About Recent ‘Trump’ Trademark Ruling

A new legal precedence may have been set last week when the Federal Circuit critiqued the USPTO’s decision to not register a trademark which criticized former president Trump. The court found that the government’s interest in protecting privacy and publicity rights did not outweigh the trademark applicant’s right to criticize public figures under the First Amendment.

Law360 and Josh Gerben discussed the ruling and it’s possible impact on the future of trademark registration.

The statutory section that blocks marks on living people without their consent has been “working very well for decades” and protects many people from having trademarks filed in their name that shouldn’t be, said Josh Gerben […]. The TTAB has issued nearly 76,500 initial refusals based on Section 2(c) since 2011, according to Gerben, though he noted hat this figure includes some applications that may have eventually been granted after the applicant obtained consent.

In light of this history Gerben had “no idea” why the court was trying to strike the section down in this case.

“I think it’s one of the worst decisions that I’ve seen from a court in a trademark case in my career, Gerben said. “The decision seems to ignore the fundamental policy behind trademark law, which is to protect consumers” from confusion as to the source of the mark.

What the court seems to forget, Gerben said, is that even if [the applicant] can’t register “Trump Too Small” as a trademark, he can still put it on the front of a T-shirt and sell it. And if Trump or his company tried to sue, the defense would be that the T-shirt is a political commentary, he said.

“You can still sell this shirt without a trademark being registered,” Gerben said. “The court acts like this person wouldn’t be able to to sell his shirts if his trademark wasn’t registered. And that’s just not the case.”

Source: Hu, Tiffany. https://www.lasw360.com. “’Trump’ TM Ruling Leaves Attorneys Grasping For Answers” 03 March 2022.