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Federal Circuit Holds Barring Registration of “Trump Too Small” Violates Free Speech

Publications / Feb 27, 2022

Article written by Clyde Shuman

The U.S. Court of Appeals for the Federal Circuit, in a precedential decision, ruled that the U.S. Trademark Office’s refusal to register the mark “TRUMP TOO SMALL” in connection with t-shirts, unconstitutionally restricted the applicant’s free speech, in violation of the First Amendment. The Court reversed the decision of the Trademark Trial and Appeal Board, which had affirmed the decision of the trademark examiner. In re: Elster, No. 2020-2205.

By way of background, in 2018, Steven applied to register the mark “TRUMP TOO SMALL” for shirts in International Class 25. Elster’s registration request noted that the phrase invoked an exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate and sought to “convey[] that some features of President Trump and his policies are diminutive.”

The U.S. Trademark Office examiner rejected the proposed mark on two grounds: (i) under section 2(c) of the Lanham Act, which bars registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” § 1052(c); and (ii) under the false association clause of section 2(a), barring registration of trademarks that “falsely suggest a connection with persons, living or dead.” § 1052(a).

In connection with the section 2(c) rejection, the examiner said that Elster’s mark could not be registered because it used Trump’s name without his consent. Further, that the mark was “intended as political commentary” was irrelevant, as there is no statutory or “case law carve[] out” for “political commentary.” The examiner rejected Elster’s argument (for both the sections 2(a) and 2(c) rejections) that denying the application infringed his First Amendment rights, finding that the registration bars are not restrictions on speech, and in the alternative, that any such restriction would be permissible.

Elster appealed the examiner’s decision to the Board, reiterating his argument that sections 2(c) and 2(a) constituted impermissible content-based restrictions on speech, that strict scrutiny should apply, that neither provision was narrowly tailored to serve a compelling government interest, and that any government interest was outweighed by the First Amendment interest in allowing commentary and criticism regarding a political figure. The Board affirmed the examiner’s denial of the mark in a decision addressing only section 2(c).

On appeal, the Federal Circuit noted initially that, in the last five years, the Supreme Court has held unconstitutional two provisions of section 2 of the Lanham Act: (i) a provision of section 2(a) denying registration of marks that “disparage . . . or bring . . . into contempt[] or disrepute” any “persons, living or dead”; and (ii) another provision of section 2(a) denying registration of marks that “consist[] of or comprise[] immoral . . . or scandalous matter.” § 1052(a). The Court held that, although those decisions were narrowly tailored and did not reach the constitutionality of section 2(c) (at issue here), and although section 2(c) does not involve viewpoint discrimination, “[w]e nonetheless conclude that as applied in this case, section 2(c) involves content-based discrimination that is not justified by either a compelling or substantial government interest.”

The Court noted that, in light of the referenced Supreme Court decisions, a trademark represents “private, not government, speech” entitled to some form of First Amendment protection. In addition, the decisions recognize that trademarks often “do not simply identify the source of a product or service but go on to say something more” on “some broader issue,” frequently “hav[ing] an expressive content.”

In this case, the Federal Circuit recognized that section 2(c) did not prevent Elster from communicating his message outright. However, the issue was whether section 2(c) can legally disadvantage the speech at issue here, noting the various advantages attached to a trademark registration.

The Court rejected the government’s argument that because trademark protection is the equivalent of a government subsidy, it is not subject to First Amendment scrutiny so long as viewpoint discrimination is not involved, finding that this position had little support in the referenced Supreme Court opinions. Regardless, even if a trademark were a government subsidy, the Court said that this was not a situation in which First Amendment requirements were inapplicable.

Per the Court, Elster’s mark was speech by a private party in a context in which controversial speech is part-and-parcel of the traditional trademark function. As such, the effect of the restrictions imposed with the subsidy must be tested by the First Amendment. The Court, rejecting another government argument, distinguished the Lanham Act bars from speech restrictions in a limited public forum, saying. “this is not a case in which the government has restricted speech on its own property to certain groups or subjects, a fact distinguishing it from nearly all of the Supreme Court’s limited public forum cases.”

The Court continued, unambiguously: ”We are not dealing with speech in a limited public forum. The speech here is entitled to First Amendment protection beyond protection against viewpoint discrimination.” The Court further said, “It is well established that speech ordinarily protected by the First Amendment does not lose its protection ‘because the [speech] sought to be distributed [is] sold rather than given away.’… Nor is expressive speech entitled to a lesser degree of protection because it is printed on a T-shirt.”

With respect to the level of scrutiny to be applied to the trademark ban, the Court said, “Whatever the standard for First Amendment review of viewpoint-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.”

Turning to the First Amendment interests at issue, the Court held they “are undoubtedly substantial,” noting in particular “the right to criticize public men,” which is “[o]ne of the prerogatives of American citizenship.” The Court noted that “[l]aws suppressing the right ‘to praise or criticize governmental agents’ generally cannot be squared with the First Amendment.”

The Court weighed the First Amendment interests at issue against the government’s substantial interest in protecting state-law privacy and publicity rights, saying, “The question here is whether the government has an interest in limiting speech on privacy or publicity grounds if that speech involves criticism of government officials—speech that is otherwise at the heart of the First Amendment.”

Beginning with the right of privacy, the Court said, “there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice,” not claimed here. Per the Court, “In such circumstances, when the restricted speech comments on or criticizes public officials, the government has no interest in disadvantaging the speech to protect the individual’s privacy interests.”

The Court continued, saying that privacy concerns “must give way when the speech at issue references a public figure because public figures subject themselves to ‘greater public scrutiny and ha[ve] a lesser interest in privacy than an individual engaged in purely private affairs.’”

The Court held that, with respect to privacy, the government had no legitimate interest in protecting the privacy of President Trump, “the least private name in American life,” from any injury to his “personal feelings” caused by the political criticism that Elster’s mark advanced.

On the asserted interest in protecting the right of publicity, the Court noted that no claim was made President Trump’s name was being misappropriated in a manner that exploited his commercial interests or diluted the commercial value of his name, an existing trademark, or some other form of intellectual property. Nor did the mark in question suggest that Trump had endorsed Elster’s product. Beyond this, the Court said that the right of publicity does not support a government restriction on the use of a mark because the mark is critical of a public official without his or her consent, citing decisions to that end from several other state and federal courts.

The Court said, “The right of publicity is particularly constrained when speech critical of a public official is involved.” Further, per the Court, “[t]he government has no valid publicity interest that could overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark.”

The Court rejected the government’s claim that section 2(c) of the Lanham Act merely “involves a targeted effort to preclude federal registration that facilitates a particular type of commercial behavior that has already been banned by most states,” pointing to the absence of authority holding that public officials may restrict expressive speech to vindicate their publicity rights. Per the Court, “In fact, every authority that the government cites reaches precisely the opposite conclusion, recognizing that the right of publicity cannot shield public figures from criticism.”