First Amendment Protection of Trademarks: In re Elster
On February 24, 2022, the US Court of Appeals for the Federal Circuit reversed the Trademark Trial and Appeal Board’s (TTAB) refusal to register a trademark consisting of the name of a living individual without written consent for violating the first amendment.[1]
In 2018, Elster sought registration of the phrase “TRUMP TOO SMALL” for use on shirts.[2] The phrase was based on an exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, aiming to “convey[ ] that some features of President Trump and his policies are diminutive.”[3] The Patent and Trademark Office (PTO) examiner rejected Elster’s trademark application on two grounds.[4] First, Section 2(c) of the Lanham Act bars registration of a trademark that consists or comprises a name identifying a specific living individual without their written consent.[5] Elster’s argument that the mark was intended as political commentary did not matter because there was no statutory or case law carved out for those types of marks.[6] The examiner rejected Elster’s argument that denying the application violated his First Amendment rights because the registration bars are not restrictions on speech and if they were they would be permissible.[7] Next, the examiner denied the registration under Section 2(a)’s false association clause, barring registration of marks that “falsely suggest a connection with persons, living or dead.”[8] This ground was addressed in a separate decision where the examiner also rejected a First Amendment defense.[9]
Elster appealed both decisions to the TTAB, which consolidated the two separate cases.[10] Elster argued that Sections 2(c) and 2(a) constituted impermissible content-based-restrictions on speech.[11] Content-based statutes limit expression based on its messages, ideas, subject matter, or content.[12] The Supreme Court has held that the government cannot engage in content-based restrictions unless there is a compelling government interest that is narrowly tailored.[13] Absent meeting this test, content-based statutes are presmptively invalid for violating the constitutional right to free speech.[14] The TTAB reasoned that Section 2(c) is not a direct restriction on speech and is viewpoint neutral.[15] The prior decisions concluded that even if the section was subject to strict scrutiny, which Elster argued in his case, it was narrowly tailored to advance two compelling government interests: 1) protecting the named individual’s rights of privacy and publicity, and 2) protecting consumers against deception.[16] Therefore, the TTAB affirmed the examiner’s denial of the mark resting solely on the Section 2(c) grounds, finding it unnecessary to address the Section 2(a) rejection.[17]
Two prior Supreme Court cases, Matal v. Tam and Iancu v. Brunetti, established that a trademark represents private, not government, speech entitled to some form of First Amendment protection because the mark frequently involves expressive content and can convey powerful messages in few words.[18] In Brunetti, the court further explained that denying trademark registration “disfavors” the speech being regulation.[19] The Federal Circuit found that, as applied in this case, Section 2(c) involves content-based discrimination rather than viewpoint discrimination as implicated by Section 2(a)’s restrictions in Tam and Brunetti.[20]
The court concluded that “whatever the standard for First Amendment review for view-point-neutral, content-based restrictions in the trademark area, whether strict scrutiny or intermediate scrutiny, there must be at least a substantial government interest in the restriction.”[21] Using this rule, the court rejected the government’s argument that their interest in protecting state-law privacy and publicity rights outweighs the First Amendment interests.[22] With respect to privacy rights, the court held that there was no plausible claim that President Trump has a privacy right protecting him from criticism in the absence of malice, which is not claimed in this case.[23] Further, the government does not have a legitimate interest in protecting the privacy of President Trump, “the least private name in American life.”[24]
While assessing the right of publicity, the court conceded that the government has an interest in protecting against the copying or misappropriation of an existing mark.[25] However, they found that there is no claim 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.[26] They also acknowledge that the government has an interest in preventing the issuance of marks that falsely suggest an individual endorses the product or service.[27] This argument is not enough to prevent issuance of Elster’s mark because there is no claim that the mark suggests President Trump endorses the product.[28] Finally, the court reasons that the right of publicity does not support a government restriction on the use of a mark because it is critical of a public official without their consent.[29]
Elster’s final challenge before the board concerned whether the Section 2(c) was constitutionally overbroad.[30] Elster raised the question only on an as-applied challenge, so the court did not review the claim, however they did note that the section raises concerns regarding overbreadth because it does not allow for discretion to exempt trademarks that advance parody, criticism, or other First Amendment interests.[31] The First Amendment overbreadth doctrine allows a law to be overturned as impermissibly overbroad when a substantial number of its applications are unconstitutional.[32]
Therefore, there was no valid right of privacy or right of publicity interest that could overcome the First Amendment protection afforded to Elster’s mark involving political criticism.[33] For the foregoing reasons, the TTAB’s application of Section 2(c) to Elster’s mark was unconstitutional under any standard of review and the decision that the mark was unregistrable was reversed.
The Federal Circuit found that Section 2(c), as applied to this case, was unconstitutional. This holding is a blow to the constitutionality of Section 2 of the Lanham Act. Going forward, we may see more constitutionality challenges being raised in trademark cases. As the court noted, there may be overbreadth issues surrounding Section 2(c). Practitioners in the trademark field will need to keep an eye out for future cases that may address this issue further or overturn the section altogether.
Footnotes
