Argument Recap / Panel Activity

This past week, the court heard oral argument in In re Elster, an appeal from the Trademark Trial and Appeal Board. We have been following this case because it attracted an amicus brief. On appeal, Elster argues a refusal of his trademark registration based on section 2(c) the Lanham Act violates of the Constitution’s First Amendment. Section 2(c) recites that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent . . . .” The United States argues that section 2(c) is constitutionally legal and applied correctly in this case. The amicus brief in this case was filed by Matthew Handel, an individual who says he has trademark applications similar to Elster. Judges Dyk, Taranto, and Chen heard the argument. This is our argument recap.

Jonathan E. Taylor argued for Elster. He argued that section 2(c) of the Lanham Act, which as discussed requires trademarks containing a living person’s name to first have that person’s permission before registration, violates the First Amendment. Taylor maintained that section 2(c) constitutes impermissible viewpoint discrimination. In alternative, Taylor argued, given the First Amendment, section 2(c) cannot be implemented as a bright line rule, and instead trademark examining attorneys should consider each case’s particular circumstances. Taylor contended, moreover, that the duties of trademark examining attorneys should include avoiding First Amendment violations.

Judge Taranto asked how the Trademark Office considers political slogans because, he said, in this scenario a trademark could be used to limit others from political speech. Taylor responded that the government has not asserted a speech interest here. He, however, noted political slogans can be trademarked, and so, he argued, the limitation here creates an unfair delineation between slogans with and without a person’s name. In addition, Taylor argued, the limitation here is content based and is therefore would not satisfy first amendment scrutiny on that basis.

Judge Taranto asked for Elster’s opinion regarding the connection of section 2(c) to the right of publicity because, he said, the government defends the section based on protection of the right of publicity. Taylor responded by arguing that current statutory definitions of rights of publicity do not cover this scenario. Even if they did, however, he argued the First Amendment would still make section 2(c) unconstitutional.

Joshua M. Salzman argued for the United States. Salzman maintained that this case is not about viewpoint discrimination at all, but about protection of intellectual property. Here, Salzman continued, only the holder of the underlying right has the ability restrict its use in trade.

Judge Dyk asked how this limit on trademarks fits with the ability to criticize a public figure. Salzman responded by arguing that this statutory provision is not a general prohibition on political speech, but rather simply a limitation on the commercial use of a name as a trademark.

Judge Dyk further asked if this statutory section perpetuated another form of viewpoint discrimination where former President Trump, or any person named in a trademark, could decide what is “trademarkable” and thereby limit free speech. Salzman responded by arguing that this statutory provision is not concerned with regulating speech, but rather protecting a person’s intellectual property interest in his or her own likeness. Salzman admitted the trademarks an individual allows under section 2(c) will correlate to their political preferences, but, he argued, that fact has nothing to do with the reasoning for limiting a trademark under that subsection.

Judge Taranto asked if a person is notified when someone applies for a trademark in their name under section 2(c). Salzman noted he did not believe notification is provided and instead the burden is on the trademark applicant to provide proof of consent with his or her application.

Salzman then argued that the trademark application process is a limited public forum and, as such, the government is able to limit some speech if any limitation is made in furtherance of the goals of the Lanham Act. In this case, Salzman continued, the restriction on trademarks corresponding to a living person furthers the goals of the Lanham Act and should be upheld.

Judge Dyk asked how the Trademark Office deals with trademarks for political slogans. Salzman said to his knowledge the Office considers these trademarks like any other trademark, but he noted he “thought it was ironic Elster was arguing a First Amendment violation . . . when he is was seeking to exclude others from using the same speech via trademark.”

In rebuttal, Taylor argued this case is a prime example of section 2(c) sweeping too broadly to block trademarks. Judge Taranto asked what a rewritten section 2(c) should look like in Elster’s opinion. Taylor responded by saying that trademarks should be allowed when they are expressive rather than commercial. Taylor also argued that the consent requirement should be eliminated.

We will continue to monitor the case and report on any developments.