The First Amendment Trumps Another Restriction on Trademark Registrations

By: Eric Ball, Rina Plotkin

On February 24, 2022, the U.S. Court of Appeals for the Federal Circuit, in In Re: Elster, overturned the Trademark Trial and Appeal Board’s (TTAB) refusal to grant a trademark registration on the phrase “TRUMP TOO SMALL” for use on T-shirts. The Federal Circuit held that the Lanham Act’s prohibition on the registration of marks including the surname of a living individual unconstitutionally restricted free speech in violation of the First Amendment as applied to this mark.

The U.S. Patent and Trademark Office (PTO) initially rejected Elster’s proposed trademark on two grounds: (1) the mark used former President Trump’s name without his written consent, in violation of section 2(c) of the Lanham Act; and (2) the mark falsely suggested a connection with former President Trump, in violation of section 2(a) of the Lanham Act. Elster appealed both decisions, and the TTAB affirmed based on section 2(c) grounds. Section 2(c) of the Lanham Act prohibits in relevant part the registration of a trademark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). Elster appealed to the Federal Circuit, which reversed the TTAB’s decision.

This ruling extends a trend of courts striking down Lanham Act trademark restrictions based on the First Amendment right to freedom of speech. In the last five years, the U.S. Supreme Court held unconstitutional two Lanham Act provisions: (1) prohibiting the registration of marks containing derogatory terms and phrases (Matal v. Tam); and (2) prohibiting the registration of immoral or scandalous matter (Iancu v. Brunetti). While those Supreme Court cases did not address the provision at issue in Elster, the Federal Circuit noted that “they do establish that a trademark represents private, not government, speech entitled to some form of First Amendment protection.”

Before diving into the analysis, the Federal Circuit observed that “[t]he First Amendment interests here are undoubtedly substantial. . . . The right to criticize public men is one of the prerogatives of American citizenship.” Indeed, the Federal Circuit called criticism of government officials “speech that is . . . at the heart of the First Amendment.” In response, the TTAB argued that the First Amendment interests implicated by section 2(c) are “outweighed by the government’s substantial interest in protecting state-law privacy and publicity rights, grounded in tort and unfair competition law.”

The Federal Circuit considered both of the TTAB’s arguments. First, as to the right of privacy, the Court held that the government has no legitimate interest in protecting the privacy of President Trump, “the least private name in American life,” “from any injury to his ‘personal feelings’ caused by the political criticism that Elster’s mark advances.’” Without any actual malice, “there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism.”

Second, the Court held that the right of publicity “does not support a government restriction on the use of a mark because the mark is critical of a public official without his or her consent.” Indeed, all the law that the government cited recognized this. For example, the only case that the government cited involving parody or criticism of public figures held that the sale of parody baseball cards featuring MLB players’ names and likenesses was protected speech under the First Amendment and did not violate the players’ right of publicity.

The Court acknowledged that the government does have interests to do with the right of publicity: first in protecting against copying or misappropriation of an existing mark, and second in preventing the issuance of marks that falsely suggest that President Trump has endorsed a particular product or service. However, the Court held that these interests aren’t implicated here, as there is no claim that this mark misappropriates Trump’s name or an existing trademark, nor is there a claim that the mark suggests that Trump endorsed Elster’s product.

In sum, the Court held that the government “does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice.” The Court left open what would be necessary to prove actual malice. It did not address, whether, for example, biting criticism like calling former President Trump “too small” could be actual malice in some contexts.

The Court also stopped short of holding that Section 2(c) was facially unconstitutional. Since Elster raised only an as-applied challenge, the Court did not decide that issue, but commented that the provision may be overbroad insofar as it “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.” So, this question is left for another day.

Given that, as Elster wrote in his opening brief in 2021, “[t]his case marks the third time in six years that this court must decide whether a statutory restriction on trademark registration complies with the First Amendment,” it is probable that the question of whether Section 2(c) is unconstitutional will come up again.

Politicians and popular figures that are already open to public criticism are also now more likely to be open to criticism through trademark registrations. This increases their need to add monitoring trademark applications to their reputation management efforts—especially since phrases such as “I hate XYZ Company” or “I don’t really like Ted Cruz” are now more likely to be granted trademark registration. 

After all, those marks do not infringe on XYZ Company or Ted Cruz’s right of privacy, do not misappropriate XYZ Company’s or Ted Cruz’s name or existing trademarks, and do not suggest that XYZ Company or Ted Cruz endorse a product showing that mark. If finding actual malice is the only way for the TTAB to reject a trademark registration for a phrase criticizing a public figure, Elster may have opened the gates for such marks.

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