Name-calling of Public Officials: Another Step in the Shifting US Perspective on Trademark Registration
Over the past decade, a number of limits on trademark coverage have been found to be unconstitutional limits on free speech. A substantial debate over the reasonableness and practicality of such limits exists. The United States has traditionally prioritized fundamental freedom of speech rights under the First Amendment of the United States Constitution over any limits on registrability of scandalous, offensive, or disparaging marks. Regarding a recent decision of the U.S. Court of Appeals for the Federal Circuit (“CAFC”), some people feel that the court has gone too far in such prioritizing of free speech rights in a slightly different context, that is, criticism of public officials.
The decision In re Elster concerns an application to register the mark TRUMP TOO SMALL for use on wearable merchandise such as clothing. The trademark examiner initially refused to register the mark, reasoning that the registration of a mark consisting of the name of a particular individual (in this case, the former President of the United States) without his/her consent is not permitted under section 2(c) of the Lanham Act. The provision of the Lanham Act involved in this case, section 2(c), prohibits registration of a trademark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.”
Elster argued that the refusal to register violated his First Amendment right of free speech, and further asserted that the mark is meant as political commentary referencing a presidential debate from 2016, not a disparaging remark about the named individual. Reasonable minds may differ about the validity of that argument. Despite Elster’s position, the trademark examiner maintained the rejection and refused registration of the mark, specifically asserting that a refusal of registration rights is not a restriction on free speech. The U.S. Patent and Trademark Office’s Trademark Trials and Appeals Board (“TTAB”) affirmed the examiner’s refusal to register the mark.
On appeal, the CAFC reversed the TTAB decision. Crucially, the appellate court found the restriction of section 2(c) of the Lanham Act to be unconstitutional as applied to Elster’s application, particularly where the mark forms a criticism of a public official. The CAFC’s decision in Elster follows and builds upon two recent U.S. Supreme Court cases also directed to Section 2 of the Lanham Act. In Matal v. Tam, 582 U.S. __, 137 S. Ct. 1744 (2017), the Court struck down the “disparagement” provision of Section 2(a) in its entirety as violative of the First Amendment. Then, in Iancu v. Brunetti, 588 U.S. __, 139 S. Ct. 2294 (2019), the Court also held the “immoral and scandalous” provision of Section 2(a) unconstitutional in its entirety. Both Supreme Court decisions relied on a “core postulate of free speech law”—that “[t]he government may not discriminate against speech based on the ideas or opinions it conveys”—and concluded that “[v]iewpoint discrimination doomed” both provisions of section 2(c) of the Lanham Act.
In its Elster decision, the CAFC explained that a major purpose of the First Amendment is “to protect the free discussion of governmental affairs” of which this mark is an example, and it does not matter whether the free speech is being sold on a t-shirt or given away. As the court stated:
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.
The CAFC stopped short of invalidating section 2(c) in its entirety because Elster raised only a constitutional challenge to application of the statute to his application, not a direct challenge to the provision in its entirety, regardless of context. The court specifically limited its decision to the USPTO’s application of the provision to Elster’s application, as a result. However, the CAFC noted a potential “overbreadth” issue with section 2(c), which could be a basis for invalidation in its entirety. The First Amendment overbreadth doctrine recognizes that a law may be invalidated as impermissibly overbroad when a substantial number of its applications are unconstitutional, judged in relation to the statute’s plainly legitimate sweep. As the court pointed out, the statute leaves the USPTO no discretion to exempt trademarks involving public figures 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. Nonetheless, the CAFC specifically reserved decision on the potential overbreadth constitutional problem for a future case properly presenting that issue.
In a majority of jurisdictions around the world, such a mark would not be registrable, under the reasoning that marks against public order or morality are not afforded registration. In contrast, the United States has always prioritized fundamental rights such as free speech and freedom of religion over any criticism of a person or place. The relevant Lanham Act provisions involved in Tam, Brunetti, and Elster all appear to be contrary to these priorities. AIPPI, an international intellectual property lawyers’ association, recently engaged in harmonization discussions on this topic. Specifically, central to the proposed resolution was the basic question of whether registrability of trademarks against public order or morality should be permitted or refused. At the AIPPI World Congress in 2021, the U.S. delegation group faced an “uphill battle” to convince other national groups to prioritize fundamental rights over governmental suppression of expression in the form of refusal to recognize trademark rights in certain marks. In the end, the AIPPI resolution for harmonization did not leave any room for consideration of what the United States would characterize as First Amendment constitutional rights, and instead was very clearly against the registrability of trademarks against public order or morality.
On January 27, 2023, the United States Government filed a petition for writ of certiorari to the Supreme Court to review the CAFC’s decision. In its petition, the United States distinguishes Tam and Brunetti as viewpoint cases from Elster, which arguably does not involve viewpoint discrimination. Here, again, reasonable minds may differ about the accuracy or validity of that purported distinction. A response is due February 27, 2023. Whether the Supreme Court will review the case and, if so, how it will decide the questions presented, remains to be seen.
 26 F.4th 1328 (Fed. Cir. 2022).
 15 U.S.C. § 1052(c).
 The author participated in the AIPPI proceedings as a member of the U.S. National Group’s relevant Study Committee. For more information on AIPPI and the resolution that discusses this topic, see https://aippi.soutron.net/Portal/Default/en-GB/RecordView/Index/4155.