In Re ELSTER
26 F.4th 1328 (Fed. Cir. 2022) (2022)
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Rule of Law:
The First Amendment prevents the government from denying trademark registration for a mark that constitutes political criticism of a public official, even if it uses the official's name without consent, because such a denial unconstitutionally restricts free speech.
Facts:
- Steve Elster sought to register the phrase “TRUMP TOO SMALL” as a trademark in standard characters for use on shirts in International Class 25.
- Elster's registration request stated that the phrase invoked a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate.
- The mark aimed to convey that some features of President Trump and his policies were diminutive.
- The proposed mark included the surname of a living individual, President Donald J. Trump.
- Elster did not obtain written consent from President Donald J. Trump for the use of his name in the proposed trademark.
Procedural Posture:
- A Patent and Trademark Office (PTO) examiner rejected Steve Elster's proposed mark "TRUMP TOO SMALL" under Section 2(c) of the Lanham Act for using a living individual's name without consent, and under Section 2(a) for false association.
- The examiner rejected Elster’s contention that denying the application infringed his First Amendment rights, finding that registration bars are not restrictions on speech or are permissible.
- Elster appealed both decisions to the Trademark Trial and Appeal Board (Board), arguing that Sections 2(c) and 2(a) constituted impermissible content-based restrictions on speech.
- The Board affirmed the examiner’s denial of the mark solely on Section 2(c) grounds, finding it unnecessary to address the Section 2(a) rejection, and concluded that Section 2(c) was not an unconstitutional restriction on free speech.
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Issue:
Does Section 2(c) of the Lanham Act, which prohibits the registration of a trademark consisting of a living individual's name without their written consent, unconstitutionally restrict free speech when applied to a mark that criticizes a public official?
Opinions:
Majority - Dyk, Circuit Judge
Yes, Section 2(c) of the Lanham Act, as applied to a mark criticizing a public official, unconstitutionally restricts free speech. The court held that trademarks represent private, not government, speech entitled to First Amendment protection, and that denying trademark registration 'disfavors' the speech being regulated. This protection is not lost because of the commercial nature of the speech or because it is printed on a T-shirt. The court rejected the government's arguments that trademark protection is a government subsidy or analogous to a limited public forum. The First Amendment interests in free discussion of governmental affairs and the right to criticize public officials are undoubtedly substantial, representing 'the essence of self-government.' The government's asserted interests in protecting state-law privacy and publicity rights, grounded in tort and unfair competition law, do not justify restricting speech critical of public officials in the trademark context, at least absent actual malice. With respect to privacy, public figures subject themselves to 'greater public scrutiny and ha[ve] a lesser interest in privacy.' The court found that the government has no legitimate interest in protecting President Trump's privacy from political criticism. Regarding publicity, no claim was made that Elster's mark exploited President Trump's commercial interests or diluted the commercial value of his name; such concerns are generally addressed by Section 2(a) for false endorsements. State-law publicity rights are 'fundamentally constrained by the public and constitutional interest in freedom of expression,' especially for speech critical of public officials. Therefore, the government does not have a privacy or publicity interest substantial enough to overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark. As Elster raised an as-applied challenge, the court did not decide on the statute's potential overbreadth but noted concerns.
Analysis:
This case significantly reinforces the robust protection for political speech within the context of trademark law, extending First Amendment safeguards beyond viewpoint discrimination to content-based restrictions on marks that criticize public figures. By holding that the government's interests in privacy and publicity do not outweigh the substantial First Amendment interest in political commentary, the decision establishes a high bar for any governmental attempt to disadvantage such speech, even through indirect means like denying trademark registration benefits. It clarifies that public figures, particularly public officials, have a diminished right to control their name and likeness when it comes to political criticism, thereby impacting the application of Section 2(c) of the Lanham Act and potentially other intellectual property statutes. The ruling signals that denying legal advantages to expressive works that engage in public discourse will face stringent constitutional scrutiny, especially when targeting political criticism.
