Federal Circuit Limits Lanham Act in Response to First Amendment Challenge

Federal Circuit Limits Lanham Act in Response to First Amendment Challenge

The Federal Circuit Court of Appeals recently ruled that the Lanham’s Act prohibition on registering a trademark including a living person’s name without their permission was unconstitutional...

The Federal Circuit Court of Appeals recently ruled that the Lanham’s Act prohibition on registering a trademark including a living person’s name without their permission was unconstitutional, at least in the case of the Trademark Trial and Appeal Board’s (TTAB or Board) refusal to register the phrase “TRUMP TOO SMALL.” According to the court, the federal government has no substantial interest in “granting all public figures the power to restrict trademarks constituting First Amendment expressions before they occur.” 

The Federal Circuit’s decision in In re Steve Elster is the latest to strike down Lanham Act restrictions on trademark registration. As discussed in prior articles, the U.S. Supreme Court struck down the prohibition on the registration of trademarks containing derogatory terms and phrases in Matal v. Tam and similarly struck down the prohibition on the registration of immoral and scandalous matter in Iancu v. Brunetti.

Trademark Registration Dispute

In 2018, Steve Elster sought to register the phrase “TRUMP TOO SMALL” in standard characters for use on shirts in International Class 25. 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 U.S. Patent and Trademark Office (USPTO) examiner rejected Elster’s proposed mark. 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.” 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. The Board affirmed the examiner’s denial of the mark.

Federal Circuit’s Decision

The Federal Circuit reversed TTAB’s decision, holding that applying section 2(c) to bar registration of Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.

In reaching its decision, the Federal Circuit noted that while neither Tam nor Brunetti resolved the case, they do establish that a trademark represents “private, not government, speech” entitled to some form of First Amendment protection. The court further emphasized that trademarks often “have an expressive content” and can convey “powerful messages … in just a few words.” While the Federal Circuit agreed with the government that section 2(c) does not prevent Elster from communicating his message outright, it stated that “whether Elster is free to communicate his message without the benefit of trademark registration is not the relevant inquiry—it is whether section 2(c) can legally disadvantage the speech at issue here.”

The Federal Circuit went on to reject 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. “[E]ven if a trademark were a government subsidy, this is not a situation in which First Amendment requirements are inapplicable. 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,” the court wrote. “Under such circumstances, the effect of the restrictions imposed with the subsidy must be tested by the First Amendment.” The Federal Circuit also emphasized that speech does not lose its First Amendment protection simply because it is sold rather than given away, nor is it unworthy of protection because it is printed on a t-shirt.

In weighing Elster’s First Amendment interests and the claimed government interests, the Federal Circuit noted that the First Amendment “has its fullest and most urgent application” to speech concerning public officials. The Federal Circuit next turned to the government’s argument that Elster’s First Amendment interests are outweighed by the government’s substantial interest in protecting state-law privacy and publicity rights, grounded in tort and unfair competition law. It ultimately rejected the argument, writing:

The government has no valid publicity interest that could overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark. As a result of the President’s status as a public official, and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech…. 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.

While the court emphasized that its decision was limited to the trademark registration at issue in the case, it also stated that a substantial number of section 2(c)’s applications would be unconstitutional. “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 court wrote. As the Federal Circuit noted, the overbreadth issue was a question for another day.

Key Takeaway

The Federal Circuit’s decision opens up trademark registrations that may have previously been prohibited, specifically those that use the names and likenesses of political figures in connection with parody or criticism. Future decisions will likely clarify whether First Amendment challenges extend to other public figures and whether section 2(c) is unconstitutional in all applications.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Ron Bienstock, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.


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Ronald S. “Ron” Bienstock joined Scarinci Hollenbeck after running his successful boutique entertainment, and intellectual property law firm, Bienstock & Michael, LLC for more than 30 years.Full Biography

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Federal Circuit Limits Lanham Act in Response to First Amendment Challenge

Federal Circuit Limits Lanham Act in Response to First Amendment Challenge
Author: Ronald S. Bienstock

The Federal Circuit Court of Appeals recently ruled that the Lanham’s Act prohibition on registering a trademark including a living person’s name without their permission was unconstitutional, at least in the case of the Trademark Trial and Appeal Board’s (TTAB or Board) refusal to register the phrase “TRUMP TOO SMALL.” According to the court, the federal government has no substantial interest in “granting all public figures the power to restrict trademarks constituting First Amendment expressions before they occur.” 

The Federal Circuit’s decision in In re Steve Elster is the latest to strike down Lanham Act restrictions on trademark registration. As discussed in prior articles, the U.S. Supreme Court struck down the prohibition on the registration of trademarks containing derogatory terms and phrases in Matal v. Tam and similarly struck down the prohibition on the registration of immoral and scandalous matter in Iancu v. Brunetti.

Trademark Registration Dispute

In 2018, Steve Elster sought to register the phrase “TRUMP TOO SMALL” in standard characters for use on shirts in International Class 25. 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 U.S. Patent and Trademark Office (USPTO) examiner rejected Elster’s proposed mark. 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.” 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. The Board affirmed the examiner’s denial of the mark.

Federal Circuit’s Decision

The Federal Circuit reversed TTAB’s decision, holding that applying section 2(c) to bar registration of Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.

In reaching its decision, the Federal Circuit noted that while neither Tam nor Brunetti resolved the case, they do establish that a trademark represents “private, not government, speech” entitled to some form of First Amendment protection. The court further emphasized that trademarks often “have an expressive content” and can convey “powerful messages … in just a few words.” While the Federal Circuit agreed with the government that section 2(c) does not prevent Elster from communicating his message outright, it stated that “whether Elster is free to communicate his message without the benefit of trademark registration is not the relevant inquiry—it is whether section 2(c) can legally disadvantage the speech at issue here.”

The Federal Circuit went on to reject 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. “[E]ven if a trademark were a government subsidy, this is not a situation in which First Amendment requirements are inapplicable. 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,” the court wrote. “Under such circumstances, the effect of the restrictions imposed with the subsidy must be tested by the First Amendment.” The Federal Circuit also emphasized that speech does not lose its First Amendment protection simply because it is sold rather than given away, nor is it unworthy of protection because it is printed on a t-shirt.

In weighing Elster’s First Amendment interests and the claimed government interests, the Federal Circuit noted that the First Amendment “has its fullest and most urgent application” to speech concerning public officials. The Federal Circuit next turned to the government’s argument that Elster’s First Amendment interests are outweighed by the government’s substantial interest in protecting state-law privacy and publicity rights, grounded in tort and unfair competition law. It ultimately rejected the argument, writing:

The government has no valid publicity interest that could overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark. As a result of the President’s status as a public official, and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech…. 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.

While the court emphasized that its decision was limited to the trademark registration at issue in the case, it also stated that a substantial number of section 2(c)’s applications would be unconstitutional. “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 court wrote. As the Federal Circuit noted, the overbreadth issue was a question for another day.

Key Takeaway

The Federal Circuit’s decision opens up trademark registrations that may have previously been prohibited, specifically those that use the names and likenesses of political figures in connection with parody or criticism. Future decisions will likely clarify whether First Amendment challenges extend to other public figures and whether section 2(c) is unconstitutional in all applications.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Ron Bienstock, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.