In re Elster, 2020-2205 (Fed. Cir. 2022) 

Context: We have an interesting free speech/trademark case this time. Steve Elster attempted to register the phrase “TRUMP TOO SMALL” under IC25 at the USPTO. Apparently, according to Elster, this phrase was taken from the 2016 presidential debate, from a particular exchange between Donald Trump and Marco Rubio. The intention of this phrase was to thus “convey[] that some features of President Trump and his policies are diminutive.”

Procedural History: Elster was denied a trademark by the USPTO on two grounds. First, the Examiner asserted that the mark was not registrable due to section 2(c) of the Lanham Act (15 U.S.C. §1052(c)). Second, the Examiner rejected the mark under section 2(a) of the Lanham Act. Elster appealed both decisions to TTAB, asserting first amendment rights, but the Board affirmed the rejection of Elster’s application under the section 2(c) grounds, without reaching the section 2(a) arguments. Elster now appeals to the Federal Circuit.

Section 2(c) of the Lanham Act reads:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

The Examiner thus rejected Elster’s mark on the grounds that Donald Trump had not given his written consent to use his name in Elster’s mark. Although the Examiner acknowledged the nature of the mark as being directed towards political commentary, there is no carve out for political commentary in the statute or the case law surrounding it. Elster argued during appeal to the Board that section 2(c), as applied, was an impermissible content-based restriction on speech, and that strict scrutiny should apply. The Board, however, held that previous Board precedent indicated that section 2(c) was not an unconstitutional restriction on free speech, and even if a higher standard of scrutiny was used, section 2(c) is narrowly tailored to advance the compelling interests of protecting privacy and publicity rights, and protecting consumers against deception.

The Federal Circuit reversed here. Building on the decisions in Matal v. Tam, 582 U.S. __, 137 S. Ct. 1744 (2017), and Iancu v. Brunetti, 588 U.S. __, 139 S. Ct. 2294 (2019), the Federal Circuit further reinforced the idea that trademarks are entitled to significant First Amendment protections. The Court began by again rejecting the argument that trademarks are not subject to First Amendment scrutiny since they represent a form of government subsidy. The Court similarly rejected arguments directed to the ideas that trademarks might be considered limited government forums or commercial speech entitled to less protection.

The Court next addressed the countervailing interests, that of privacy and publicity. Regarding privacy, the Court essentially followed the classic First Amendment analysis, concluding that Donald Trump has no right to privacy from criticism absent “actual malice”. Regarding privacy, the Court stated that “[n]o similar claim is made here that President Trump’s name is being misappropriated in a manner that exploits his commercial interests or dilutes the commercial value of his name, an existing trademark, or some other form of intellectual property” and that “[n]o plausible claim could be or has been made that the disputed mark suggests that President Trump has endorsed Elster’s product.” Further, the Court noted that “there is no right to restrict dissemination of a public figure’s likeness when the publication is intertwined with parody or critical speech” and that “[t]he right of publicity is particularly constrained when speech critical of a public official is involved”.

The Court thus concluded that, no matter the level of scrutiny applied, Elster’s First Amendment rights outweigh the government’s interests in keeping him from registering his mark, absent “actual malice”. The Court concluded by saying that since Elster only raised an as-applied challenge, it could not rule on whether section 2(c) itself was unconstitutional. However, the Court indicated that “section 2(c) raises concerns regarding overbreadth” and that “[i]t may be that a substantial number of section 2(c)’s applications would be unconstitutional.”

The big takeaway from this case is the strong indication from the Federal Circuit that section 2(c) of the Lanham Act might be facially unconstitutional, and thus unenforceable. Even aside from the Court’s concerns regarding overbreadth, is hard to imagine, for example, many situations where the name of a deceased President might be used in a mark that would not follow the exact analysis used by the Court here. The Court’s decision above is thus in direct conflict with the plain language of the statute.