Brand Protection v. Free Expression

We are fans of the First Amendment and never liked arbitrarily applied rules about what is “too offensive” to protect as a trademark.  Next on the chopping block may be the prohibition on registrations identifying a living individual without their consent.  In a recent case, Mr. Elster tried to register “TRUMP TOO SMALL” and was refused because he didn’t have consent.  After back and forth with the USPTO, an appeals court reversed the refusal of the mark on a First Amendment basis, acknowledging that the mark was intended as commentary on some “diminutive” aspects of the former president.   In re Elster, No. 20-2205 (Fed. Cir. Feb. 23, 2022).  At this point, no new rule is in place regarding political commentary trumping the name consent rule, but it could be appealed to the United States Supreme Court in the future.  It is also worth noting that merely ornamental/decorative uses (i.e., a t-shirt design that is not associated with a freestanding brand) remain entitled to only a low level of protection.

The high court will, however, take on free speech v. consumer confusion, in the form of a dog toy parodying an iconic whiskey bottle.  Instead of “Jack Daniels,” VIP Products’ chew toy label reads “Bad Spaniels” – and Jack Daniel’s Properties Inc. was not amused.

This has been litigated back and forth for years, with the toymaker winning the latest round. (You may recall Louis Vuitton losing against the maker of Chewy Vuitton toys – a case that was not appealed.) While luxury brands are notorious for having no sense of humor, Jack Daniels raises a reasonable point about the slippery slope of protecting all parodies (e.g., the risk of kids eating cannabis that mimics known candy branding.) VIP Prods. Ltd. Liab. Co. v. Jack Daniel’s Props., 953 F.3d 1170 (9th Cir. 2020).

The ruling may expand the scope of what’s known as the Rogers Test – which balances artistic expression (free speech) with consumer confusion, but traditionally applied to expressive works (music, movies, books) and not commercial products.

The Moskowitz Firm is monitoring these cases in 2023.