Could Trump Too Small Shrink Free Speech Rights In The Trademark Application Process?

From Political Trash Talk to First Amendment Debate

Steve Elster submitted an application to the U.S. Patent and Trademark Office to register the phrase “TRUMP TOO SMALL” as a mark on t-shirts. The phrase recalls a statement made by Marco Rubio during the 2016 presidential campaign about that then-candidate Trump : “Have you seen his hands? …you know what they say about men with small hands. You can’t trust them.”

The examiner, citing Section 2(c) of the Lanham Act, 15 U.S.C. §1052(c) (“Act”), which bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent”, rejected the application because “TRUMP” would likely be construed as a refence to Donald Trump by the public.

Elster appealed the refusals to the Trademark Trial and Appeal Board (TTAB), contending that requiring Trump’s consent to the use of his name to register this mark violates his First Amendment free speech, because the mark is protected political speech within the meaning of the Free Speech clause of the First Amendment. The TTAB rejected Elster’s First Amendment arguments, affirming the examiner’s refusal under Section 2(c), and found it unnecessary to address the examiner’s rejection under Section 2(a).

Elster appealed the TTAB decision to the U.S. Court of Appeals for the Federal Circuit (CAFC). The Appellate Court reversed the TTAB decision, holding that the denial was unconstitutional because the government has no substantial interest in “granting all public figures the power to restrict trademarks constituting First Amendment expressions before they occur.”

Why a case about little hands could be huge.

This is the third time in about the last five years that the Supreme Court is being asked to consider whether the Lanham Act, initially intended to regulate commercial speech, prevent unfair competition, and protect consumer rights, can restrict First Amendment free speech rights. Crucially, the decision in Elster could potentially narrow the application of the two previous cases and severely restrict their applicability to other sections of the Lanham Act.

In the two previous cases, the Supreme Court determined that the restrictions were unconstitutional restraints of free speech under Section 2(a) of the Act. In 2017, in Matal v. Tam (582 U.S. 218, 137 S. Ct. 1744, 198 L. Ed. 2d 366, 137 S. Ct. 1744 (2017)), the Court determined that the Act’s ban on the registration of marks that may disparage entire groups of people was an Unconstitutional restriction of free speech. In 20019, in Iancu v. Brunetti (204 L. Ed. 2d 714, 139 S. Ct. 2294 (2019)), the Court determined that the ban on the registration of material that is considered profane or lewd was unconstitutional.

Both of these cases established that the USPTO’s refusal of an application could disfavor certain speech based strictly on its content without showing a compelling government interest, and could, therefore, violate the First Amendment despite arguably being commercial speech .

Tam and Brunetti were the first cases to recognize that the Lanham Act could unconstitutionally restrict free speech rights, but they concerned viewpoint-based restrictions under Section 2(a) of the Lanham Act. Elster concerns the Constitutionality of Section 2(c)’s content-based restrictions based upon state-law privacy and publicity rights when the content identifies political public figures. The CAFC did recognize that the Supreme Court’s decisions in Tam and Brunetti were narrowly tailored and did not reach the constitutionality of Section 2(c) but determined that “… as applied in this case, section 2(c) involves content-based discrimination…”.

Proponents of the ban on registration of material that references or calls to mind a public figure argue that section 2(c) is content neutral, and that the purpose of the statute is to avoid confusing consumers. Opponents argue that the ban is not content neutral when used to restrict criticism of political figures, and improperly reaches beyond the primary concerns of trademark law because the true aim is to protect rights of privacy and publicity.

The Supreme Court is now essentially tasked with determining whether to expand or shrink free speech rights under the Lanham Act, by determining whether its decisions in Tam and Brunetti should be restricted specifically to section 2(a) of the Act, or, if the CAFC is correct, the analysis in Tam and Brunetti can be applied more broadly to other sections.

The case is In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022), cert. granted, (Vidal v. Elster, U.S. June 5, 2023) (No. 91-142).

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