Last week, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a TTAB decision affirming a refusal to register the phrase TRUMP TOO SMALL because it “comprises the name of [former] President Donald Trump without his consent,” striking yet another blow to the constitutionality of Section 2 of the Lanham Act.

Steve Elster sought to register the phrase TRUMP TOO SMALL for use on shirts in Class 25. The examiner refused registration of the mark based, in part, on Section 2(c) of the Lanham Act, which bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent….” 15 U.S.C. § 1052(c).

In response to the refusal, Elster explained that he sought to register the phrase because it “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.’” In re Steve Elster, Case No. 20-2205, Dkt. #57, at p. 2 (Fed. Cir. Feb. 24, 2022) (precedential). Accordingly, Elster argued that the refusal to register violated his First Amendment right of free speech.

The examiner stated it did not matter that Elster intended the mark to serve as “political commentary” because “there is no statutory or ‘case law carve[] out’ for ‘political commentary.’” Id., at p. 3. The examiner also “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.” Id. The TTAB affirmed the refusal and Elster appealed.

The CAFC reversed the TTAB, holding Section 2(c) unconstitutional, as applied in this case, because the government has no substantial interest in “granting all public figures the power to restrict trademarks constituting First Amendment expressions before they occur.” Id., at p. 19. At the outset, the Federal Circuit noted that, in the last 5 years, the U.S. Supreme Court has held two provisions of Section 2 of the Lanham Act unconstitutional.  In Matal v. Tam, 582 U.S. __, 137 S. Ct. 1744 (2017), the Court struck down the “disparagement” provision of Section 2(a). Then, in Iancu v. Brunetti, 588 U.S. __, 139 S. Ct. 2294 (2019), the Court held the “immoral and scandalous” provision of Section 2(a) unconstitutional. The CAFC recognized that both of the Court’s decisions rested 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’” Id., at p. 4.

While the CAFC acknowledged that Tam and Brunetti were decided on narrow grounds and did not resolve the question of the constitutionality of Section 2(c) as applied to Elster’s claim, it held that the cases established that a trademark “represents ‘private, not government, speech’ entitled to some form of protection.” Id., at p. 5. The CAFC noted that trademarks often “have an expressive content” and can convey “powerful messages … in just a few words.” Id. Moreover, it recognized that Brunetti further established that “denying trademark registration ‘disfavors’ the speech being regulated.” Id. Ultimately, the CAFC held that the relevant inquiry is not “whether Elster is free to communicate his message without the benefit of trademark registration…—it is whether Section 2(c) can legally disadvantage the speech at issue here.” Id., at pp. 5-6.

The CAFC found that “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.” Id., at p. 7. It further noted that speech does not lose its First Amended protection simply because it is sold rather than given away, nor does it lose its protection because it is printed on a t-shirt. Id., at pp. 8-9. Instead, speech may be restricted only where there is “at least a substantial government interest in the restriction.” Id., at p. 9.

The CAFC found the First Amended interests at issue were “undoubtedly substantial”—particularly given that a major purpose of the First Amendment is “to protect the free discussion of governmental affairs.” Id. On the other hand, the Federal Circuit found no plausible claim that former President Trump “enjoys a right of privacy protecting him from criticism in the absence of actual malice” or that the government has a “legitimate interest in protecting the privacy of President Trump, ‘the least private name in American life,’” from injury to his “personal feelings” caused by Elster’s political criticism. Id., at pp. 11-12.

The Federal Circuit similarly rejected any claim that registration of Elster’s mark would constitute a misappropriation of former President Trump’s right of publicity and found that, while the government does have an interest in preventing the issuance of marks that falsely suggest that an individual has endorsed a product or service, there was no plausible claim that could be made that President Trump has endorsed Elster’s product. Id., at p. 13-14.

In the end, the Federal Circuit held:

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.”

Id., at pp. 17-19.

At the conclusion of its opinion, the Federal Circuit noted that Elster had raised only an as-applied challenge and, so, reserved questions regarding whether Section 2(c) is constitutionally overbroad for another day. Id., at p. 19. However, the Federal Circuit specifically noted that “[i]t may be that a substantial number of Section 2(c)’s application would be unconstitutional,” seeming to extend an invitation to future litigants to challenge the same.