Full CAFC Reject’s Vidal’s Request for Rehearing in TRUMP TOO SMALL Trademark Case

“Elster’s mark is speech by a private party in a context in which controversial speech is part-and-parcel of the traditional trademark function…. Under such circumstances, the effect of the restrictions imposed with the subsidy must be tested by the First Amendment.” – CAFC

Image submitted by Elster to USPTO

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday denied a request for panel rehearing or rehearing en banc by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal of a February CAFC decision that held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional.

In its February decision, the CAFC held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.” Elster attempted to register the trademark TRUMP TOO SMALL for use on T-shirts, but an examiner refused the application, saying that section 2(c) bars registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” While Elster argued the mark was “intended as political commentary,”—particularly, to “convey[] that some features of President Trump and his policies are diminutive”—the examiner said there is no statutory or “case law carve[] out” for “political commentary.” The examiner also rejected Elster’s argument 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.”

Separately, the examiner 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” and further rejected a First Amendment defense in that case.

On appeal, the Trademark Trial and Appeal Board (TTAB) consolidated the two cases and affirmed the examiner’s decisions on the section 2(c) grounds alone. The Board explained that Section 2(c) has been found not to be an unconstitutional restriction on free speech because 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.”

February Decision Stands

The Federal Circuit in its analysis cited Matal v. Tam and Iancu v. Brunetti to bolster its view that “a trademark represents ‘private, not government, speech’ entitled to some form of First Amendment protection.”  The court said that “[e]ven though the government in the trademark area has not imposed an absolute prohibition on speech, Brunetti further established that denying trademark registration ‘disfavors’ the speech being regulated.”

The USPTO had argued that trademark protection is equivalent to a government subsidy and thus not subject to First Amendment scrutiny unless viewpoint discrimination is involved. But the CAFC said this argument had little support in the Tam and Brunetti decisions. Even if trademarks did represent a government subsidy though, this case would not be one in which First Amendment considerations were inapplicable, said the court. The CAFC added:

“Elster’s mark is speech by a private party in a context in which controversial speech is part-and-parcel of the traditional trademark function, as the Supreme Court decisions in Tam and Brunetti attest. Under such circumstances, the effect of the restrictions imposed with the subsidy must be tested by the First Amendment.”

The court was also not convinced by the argument that Lanham Act bars are comparable to speech restrictions in a limited public forum and ultimately said the speech at issue here is entitled to First Amendment protection.

In fact, the First Amendment is especially pertinent with respect to speech concerning public officials and that is not outweighed by the privacy concerns articulated by the government, wrote the court. “Here, there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice,” explained the CAFC. “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.”

While the government’s interest in protecting the right of publicity “is more complex,” said the court, absent a claim “that President Trump’s name is being misappropriated in a manner that exploits his commercial interests or dilutes the commercial value of his name, an existing trademark, or some other form of intellectual property” or that the mark falsely suggests Trump has endorsed the product, “the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context” under any relevant standard, said the court.

2(c)’s Overbreadth Saved for ‘Another Day’

Finally, while the court expressed concerns about the “overbreadth” of section 2(c) under the First Amendment overbreadth doctrine, which recognizes that “a law may be overturned as impermissibly overbroad” when “a ‘substantial number’ of its applications are unconstitutional, ‘judged in relation to the statute’s plainly legitimate sweep,’” the CAFC reserved the issue for another day. However, the court opined that “the statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests. It effectively grants all public figures the power to restrict trademarks constituting First Amendment expression before they occur.”

The denial of rehearing means that the USPTO’s only recourse now is the Supreme Court. The TTABlog called the February decision “another hit” to the Lanham Act.




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One comment so far.

  • [Avatar for Constitutional conundrum]
    Constitutional conundrum
    September 2, 2022 01:23 pm

    Isn’t the CAFC reasoning based on First-Amendment-protected free speech inherently contradictory?
    The First Amendment protects ones right to make political speech.
    Trademark protection from a registration permits a registrant to prevent others from using the registered mark, and others confusingly similar to it.
    So, if a registrant has a registration to a mark that is an expression of political speech, the registrant could prevent other persons from exercising their First Amendment free speech rights to engage in the same political speech, in violation of the other persons’ First Amendment free speech rights. Thus, a trademark registration to such political speech actually restricts the First Amendment-protected free speech of the other persons.
    Not obtaining a registration would not prevent or prohibit the trademark applicant from continuing to engage in the political speech, even in a commercial context, and therefore not obtaining a registration would not violate the First Amendment free speech rights of the applicant.
    In contrast, obtaining a registration converts the political speech into commercial speech explicitly for the purpose of obtaining the federal statutory right to exclude others from engaging in similar politically-motivated commercial speech. Such a registration inappropriately restricts the public’s rights to engage is similar political speech, in which such political speech was the CAFC’s purported basis for permitting the registration at all. That’s backwards. Welcome to the The Upside Down!