Background
In 2018, Steve Elster applied to register the mark “TRUMP TOO SMALL” for use on shirts and hats. The phrase derived from an exchange during a 2016 Republican presidential primary debate between Donald Trump and Senator Marco Rubio, and was intended to convey commentary on certain attributes of President Trump and his policies. The USPTO refused registration under Section 2(c) of the Lanham Act, which prohibits the registration of any mark that “consists of or comprises a name … identifying a particular living individual except by his written consent.” Because Trump had not consented to the use of his name, the Trademark Trial and Appeal Board (TTAB) upheld the refusal. Elster appealed to the Federal Circuit.
The Court’s Holding
The Federal Circuit reversed. The court held that applying Section 2(c) to refuse registration of Elster’s mark was unconstitutional under the First Amendment — and would be so under any applicable standard of scrutiny. The court reasoned that Section 2(c)’s requirement of the named individual’s consent operated as a restriction on speech critical of government officials and public figures: only marks flattering enough to obtain the named person’s permission would be registered, while critical or satirical marks would be denied. That, the court found, was viewpoint discrimination.
The Federal Circuit drew on the line of cases following Matal v. Tam (2017) and Iancu v. Brunetti (2019) in which the Supreme Court had struck down other Lanham Act content-based restrictions on trademark registration. While the government argued that Section 2(c) protected individuals’ privacy and publicity interests rather than expressing a viewpoint preference, the court rejected this reasoning as applied to sitting government officials and public figures, for whom the government has no cognizable interest in shielding from critical commentary. The case was closely watched as an extension of the Tam/Brunetti line into the political speech context.
Key Takeaways
- As applied to marks commenting on sitting government officials or public figures, Section 2(c)’s requirement of written consent before registration operates as viewpoint discrimination that violates the First Amendment.
- The Federal Circuit extended the Matal v. Tam and Iancu v. Brunetti line of reasoning to find that trademark applicants have a constitutional right to register critical commentary marks even without the subject’s permission.
- The government’s interest in protecting individuals’ privacy and publicity rights is insufficient to justify the First Amendment burden in the context of commentary on public figures and government officials.
- Note: The Supreme Court reversed this decision in Vidal v. Elster (2024), unanimously holding that Section 2(c)’s names clause does not violate the First Amendment because it is a content-based but not viewpoint-based restriction rooted in the history of trademark law.
Why It Matters
In re Elster was part of a continuing judicial debate over whether trademark registration can be conditioned on content-based criteria without running afoul of the First Amendment. Coming after Tam (striking down the disparagement clause) and Brunetti (striking down the immoral or scandalous clause), the Federal Circuit’s ruling suggested a broad trajectory toward viewing nearly all content-based restrictions in trademark law as constitutionally suspect.
The Supreme Court’s reversal in 2024 (Vidal v. Elster) drew a distinction between viewpoint-neutral restrictions grounded in the historical traditions of trademark law — such as protecting living persons from having their names commercialized without consent — and viewpoint-discriminatory restrictions that favor certain messages. That ruling curtailed the extension of Tam and Brunetti and preserved Section 2(c) as constitutionally permissible. The Federal Circuit’s 2022 decision remains significant as a data point in the evolving jurisprudence on First Amendment limits of the trademark registration system, and it raised important questions about how far the government can go in restricting political commentary through the licensing of speech in the commercial context.