IP Law Daily, TRADEMARK—TTAB: Board affirms proposed mark TRUMPINOCCHIO cannot be registered, (Aug 2, 2024)

By Justin Marcus Smith, J.D.

Particular individuals, including famous ones, are entitled to Section 2(c) protection without having to show a connection with the applicant’s business use of the proposed mark.

In a non-precedential decision, the Trademark Trial and Appeal Board (Board) affirmed a USPTO trademark examining attorney’s refusal to register the mark TRUMPINOCCHIO. The Supreme Court’s recent decision in Vidal v. Elster held that 15 U.S.C. § 1052(c) (Section 2(c)) does not violate the First Amendment. That resolved the applicant’s First Amendment challenge in the instant appeal. The Board accordingly applied Section 2(c) as constitutional. The Board affirmed the mark violated Section 2(c) because the public would tend to associate the mark with former President Donald Trump (Trump), a particular living individual who did not consent to the mark. The Board said it need not address the examining attorney’s alternate ground for refusal under 15 U.S.C. § 1052(a) (Section 2(a)). Section 2(a) would have required a finding that the public would tend to associate Trump with the applicant’s business use of the proposed mark (In re Zajkowski, Serial No. 87554778 (T.T.A.B. July 29, 2024)).

Background. Richard Zajkowski (“applicant”) sought registration on the Principal Register for the mark TRUMPINOCCHIO for various notions and novelties (e.g., bumper stickers, greeting cards, cups, and apparel). The trademark examining attorney refused registration under 15 U.S.C. § 1052(a) on the basis that the proposed mark comprised matter that may falsely suggest a business connection or association with former President Trump (Trump). The examining attorney also refused registration under 15 U.S.C. § 1052(c) (Section 2(c)) on the basis that it comprised Trump’s name without his written consent. The applicant appealed.

The Board suspended appeal in light of a pending decision In re Elster, 26 F.4th 1328 (Fed. Cir. 2022) about an unrelated but comparable attempt to register the proposed mark TRUMP TOO SMALL. The Elster applicant said refusal to register that mark violated the First Amendment. The U.S. Supreme Court granted a U.S. Patent and Trademark Office petition for a writ of certiorari. The Supreme Court’s June 13, 2024 disposition in Vidal v. Elster, 602 U.S. 286 (2024) reversed the Federal Circuit and held that Section 2(c) does not violate the First Amendment. The TTAB then lifted the suspension in the instant matter and resumed the instant appeal.

Constitutional challenge. The Board concluded the applicant’s contention that Section 2(c) impermissibly restricted the First Amendment right of free speech was no longer viable. That was so because Elster held the “names clause” in Section 2(c) did not violate the First Amendment. In an opinion written by Justice Clarence Thomas, the Supreme Court narrowly held that history and tradition established that the names clause did not violate the First Amendment.

2(c) Refusal. Turning to the refusal under Section 2(c), the Board affirmed refusal on the ground that the applicant proposed registration of a mark comprising the name of former President Donald Trump without his written consent. The court did not reach Section 2(a)’s false association clause.

The applicant conceded that the “TRUMP” portion of the proposed mark “obviously” referred to the former President. However, the applicant also argued no reasonable person would assume a business association between Trump and the proposed TRUMPINOCCHIO mark. The Board construed Section 2(c), unlike Section 2(a), as prohibiting registration of any proposed mark involving a living person’s name without written consent “regardless of whether there is a suggested [business] connection.”

The Board noted it recently found that Section 2(c) precluded registration of the mark OBAMA PAJAMA for sleepwear even though the record did not support a business connection with former President Barack Obama. In re Hoefflin, 97 USPQ2d 1174, 1177 (T.T.A.B. 2010). In that matter, the Board addressed that famous individuals are entitled to Section 2(c) protection without having to show a connection with the business. Likewise, it was clear here that President Trump is “extremely well known[.]” The court said the applicant also admitted there was no question “the public would view the name in question as the name of a particular living individual.” The court concluded the necessary Section 2(c) connection to the person existed; therefore, it need not explore a Section 2(a) connection with the business.

The Case is Serial No. 87554778.

Judge: Kuhlke, K.

Attorneys: Richard Zajkowski, pro se. Kapil K. Bhanot for the USPTO.

Cases: Trademark USPTO