Crossroads Between Free Speech and Trademarks
Over the summer, the Supreme Court announced it will take up a trademark case to determine whether the application of Section 2(c) of the Lanham Act to political figures is violative of the First Amendment.
In a memorable moment during the 2016 presidential debates, Florida Senator Marco Rubio taunted Donald Trump for allegedly having small hands. In a spinoff of Senator Rubio’s joke, Steve Elster attempted to register the phrase “Trump Too Small” with the intention of printing and selling the phrase on t-shirts and hats.
The U.S. Patent and Trademark Office (USPTO) examiner denied Elster’s registration on two grounds. First, the examiner concluded that the mark could not be registered because section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c), prohibits registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” Elster’s mark could not be registered because it used Trump’s name without his written consent. The examiner also denied registration of the mark in a separate decision under section 2(a) of the Lanham Act, which forbids the registration of marks that “falsely suggest a connection with persons, living or dead.”
Elster attempted to assert a First Amendment defense, where he argued that sections 2(a) and 2(c) of the Lanham Act constituted impermissible content-based restrictions on his speech. Elster further argued that strict scrutiny should apply because the government would be unable to show that either provision was narrowly tailored to serve a compelling government interest. Strict scrutiny is the highest and most stringent form of judicial review that courts use to analyze the constitutionality of laws. Under strict scrutiny, a law that interferes with free speech must achieve a “compelling state interest.” The government must also show that the law is “narrowly tailored” to achieve the compelling state interest. A failure to meet both prongs of the standard results in a finding that the law is unconstitutional. Elster contended that any government interest would be outweighed by the First Amendment interest in allowing commentary and criticism regarding a political figure. The examiner rejected Elster’s First Amendment defense.
Elster appealed the examiner’s decision to the Trademark Trial and Appeal Board (the “Board”). The Board is an administrative tribunal within the USPTO responsible for hearing and ruling on certain disputes related to federal trademark registrations and applications for registration. In his appeal, Elster reiterated his argument that sections 2(c) and 2(a) constituted impermissible content-based restrictions on his freedom of speech. The Board upheld the USPTO’s decision, holding that the mark should not be registered because it included former President Trump’s name without his written consent, in violation of section 2(c).
On November 3, 2021,Elster appealed to the U.S. Court of Appeals for the Federal Circuit where he argued that section 2(c) of the Lanham Act violates the First Amendment. The Court agreed with Elster’s argument and reversed the judgment of the Board. In its opinion, the Court noted that in the last five years, it has held that the Lanham Act could unconstitutionally restrict free speech. In a 2019 Supreme Court case, the Court held that the Lanham Act’s prohibition on registration of “immoral or scandalous” trademarks violated the First Amendment. Similarly, in a 2017 case, the Court found the Lanham Act’s ban on the registration of marks that “disparage” any person, living or dead, was unconstitutional. In both cases, the Supreme Court found that the bar constituted viewpoint discrimination. Any speech that is treated differently by a government entity based on the viewpoint it expresses, is considered viewpoint discrimination, which the First Amendment protects against.
In its opinion, the Court also noted that the application of the Lanham Act to Elster’s desired mark was an unconstitutional restriction of his speech, violating the First Amendment. The Court reversed the Board’s decision, holding that the denial was unconstitutional because the government has no plausible “interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice.”
Elster highlights an interesting tension between trademarks and the First Amendment . The case will address a question that the Supreme Court has not resolved in prior decisions because, unlike the previous cases, section 2(c) does not involve viewpoint discrimination. A ban on the registration of marks that reference public figures in a disparaging or critical manner could arguably uphold one of the purposes of the Lanham Act: to avoid causing confusion among consumers. In this case, any confusion would stem from consumers thinking the former president endorsed the products Elster sought to trademark and sell.
On the other hand, opponents could argue that the ban is not content neutral when it is used to restrict speech that is critical of government officials or public figures. It could be argued that this protection improperly prioritizes the protection of privacy rights and publicity over free speech rights in trademarks. Elster argued that such protections ultimately only shield “celebrities and world-famous political figures,” giving “special protection” to presidents, “the least private name in American life.” In his merits brief, Elster argued that because “no one would ever consent to the registration of speech that insults them, section 2(c) effectively precludes the registration of all marks that disparage or criticize living people.”
In June 2023, the United States Supreme Court granted certiorari, agreeing to consider whether the refusal to register Elster’s mark violates his First Amendment rights. The Court heard oral arguments on November 1, 2023.