By Matthew Clark, Frost Brown Todd LLC
On Feb. 24, 2022, in In re: Steve Elster, the United States Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board's refusal to register a trademark application for "TRUMP TOO SMALL" holding the denial unconstitutionally restricted free speech in violation of the First Amendment. Applicant Steve Elster sought registration of the mark "TRUMP TOO SMALL" with the United States Patent and Trademark Office (USPTO) in 2018 based on an intent to use the mark with clothing items. As noted in the application for the mark, Elster explained the mark is a reference to an exchange between President Donald Trump and Senator Marco Rubio in a presidential debate regarding the size of President Trump's manhood and aims to provide a comment on the substance of President Trump's governing approach and policies. The USPTO examiner refused to register the application based on Section 2(c) of the Lanham Act, which bars registration of a trademark that consists of or comprises a name identifying a particular living individual without the individual’s written consent, as well as Section 2(a) of the Lanham Act, which bars registration of trademarks that falsely suggest a connection with persons, living or dead.
In an appeal of the USPTO examiner's refusal, the Trademark Trial and Appeal Board (Board) affirmed the examiner's decision based solely on an examination of Section 2(c). While the Board acknowledged it did not have the power to declare statutory provisions unconstitutional, the Board found Section 2(c) was not an unconstitutional restriction on free speech because it was narrowly tailored to advance two compelling government interests, namely, (1) protecting rights of privacy and publicity of individuals, and (2) protecting consumers against confusion as to source. Given such a finding, the Board found it unnecessary to discuss the rejection under Section 2(a).
On appeal of the Board's decision, however, the Federal Circuit reversed, finding the Board's application of Section 2(c) to the "TRUMP TOO SMALL" mark was an unconstitutional restriction on free speech under the First Amendment. In its ruling, the Federal Circuit noted Matal v. Tam and Iancu v. Brunetti—two recent Supreme Court cases finding portions of Section 2(a) constituted viewpoint discrimination—establish that a trademark represents private speech and often consists of "expressive content" with the ability to "convey powerful messages." Moreover, speech does not lose it First Amendment protection merely because it is commercial in nature. As such, whatever the First Amendment standard of review, there must be at least a substantial government interest in order to restrict the speech of the subject trademark.
With that in mind, the Federal Circuit rejected the government's claim that it has a substantial interest in protecting state-law privacy and publicity rights in this case, finding: (1) no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice, i.e., "false information with knowledge of its falsity or in reckless disregard of the truth;" (2) no claim that President Trump's name is being misappropriated in a manner that exploits his commercial interests or dilutes the commercial value of his name or an existing trademark; (3) no plausible claim that the subject trademark suggests President Trump endorses Elster's clothing goods; and (4) right of publicity laws do not support a government restriction on the use of a mark because the mark is critical of a public official, noting in support other cases in which courts have found a First Amendment right to use public figures' names and likenesses when part of parody or critical speech. Accordingly, the Federal Circuit concluded the USPTO's "refusal to register Elster's mark [could not] be sustained because 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."
As a final note, the Federal Circuit indicated section 2(c) may be impermissibly overbroad as well, meaning a substantial number of its applications could be unconstitutional; however, the court declined to rule on such a finding given Elster only raised an as-applied challenge.
To read the full decision, click here.
If you would like to submit content or write an article for the Intellectual Property Section, please email Kara Sikorski at ksikorski@indybar.org.
Subscribe to Intellectual Property Section news here!
member center
