Opinions / Panel Activity

On February 24, the Federal Circuit issued its opinion in In re Elster, a case we have been following because it attracted an amicus brief. On appeal from the Trademark Trial and Appeal Board’s rejection of a trademark registration, Elster argued the rejection violated of the Constitution’s First Amendment. In particular, Elster faulted section 2(c) of the Lanham Act, which 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 argued that section 2(c) is constitutionally legal and applied correctly in this case. The Federal Circuit, however, found section 2(c) unconstitutional as applied here. This is our opinion summary.

Judge Dyk summarized the relevant background:

In 2018, Elster sought to register the phrase “TRUMP TOO SMALL” in standard characters for use on shirts. . . . According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to “convey[] that some features of President Trump and his policies are diminutive.”

The Patent and Trademark Office (“PTO”) examiner rejected Elster’s proposed mark on two grounds. First, the examiner concluded that the mark was not registrable because section 2(c) of the Lanham Act 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). Consistent with this provision, Elster’s mark could not be registered because it used Trump’s name without his consent. It did not matter, according to the examiner, that the mark was “intended as political commentary” because there is no statutory or “case law carve[] out” for “political commentary.” The examiner rejected Elster’s contention 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. In a separate decision, the examiner also denied registration of the mark under section 2(a)’s false association clause, which bars registration of trademarks that “falsely suggest a connection with persons, living or dead.” The examiner here also rejected a First Amendment defense.

Elster appealed both decisions to the Board, which consolidated the two cases. . . . The Board affirmed the examiner’s denial of the mark in a decision that rested solely on section 2(c) grounds, finding it unnecessary to address the rejection under section 2(a). Although the Board recognized that it does not have authority to declare statutory provisions unconstitutional, it noted that prior Board decisions have addressed the constitutionality of section 2(c) in light of the Board’s experience and familiarity with the purposes underlying the statute, and it concluded that section 2(c) was not an unconstitutional restriction on free speech. The Board explained, “even if Section 2(c) were subject to greater scrutiny,” it is narrowly tailored to advance two compelling government interests: protecting the named individual’s rights of privacy and publicity and protecting consumers against source deception. Elster appeals.

Judge Dyk first considered two precedential cases and determined that neither resolved the constitutionality of 2(c). Instead, both were “carefully cabined to the narrow, ‘presumptive[] unconstitutional[ity]’ of section 2(a)’s viewpoint-based restrictions.” However, he explained, these precedential cases establish that “a trademark represents ‘private, not government, speech’ entitled to some form of First Amendment protection.”

Judge Dyk then noted that the proper constitutional inquiry in this case “is whether section 2(c) can legally disadvantage the speech at issue here.” Judge Dyk noted that while it is true that “trademarked speech is entitled to First Amendment protection and that the protection is not lost because of the commercial nature of the speech,” neither of these principles establishes “the relevant test.” Moreover, he noted, “[w]hatever 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.”

Judge Dyk then assessed the relevant First Amendment and government interests. He noted that the “First Amendment interests here are undoubtedly substantial,” in particular the protection of “free discussion of governmental affairs.” He then considered “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.”

As to this latter inquiry, Judge Dyk determined that, “[w]ith respect to privacy, the government has 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 advances.”  Further, Judge Dyk determined, “[t]he 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.”

As a result of this analysis, Judge Dyk concluded that, “whether we apply strict scrutiny and the compelling government interest test, or . . . intermediate scrutiny and the substantial government interest test, ‘the outcome is the same.’” The “PTO’s refusal to register Elster’s mark cannot be sustained because the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice, which is not alleged here.”

Judge Dyk, however, noted that Elaster presented an as-applied challenge, and so the court did not “decide whether the statute is constitutionally overbroad.”

In the end, the Federal Circuit held “that the Board’s application of section 2(c) to Elster’s mark is unconstitutional under any conceivable standard of review, and accordingly [it] reverse[d] the Board’s decision that Elster’s mark is unregistrable.”