Federal Circuit Holds Bar on Registering “Trump Too Small” Violates First Amendment

By Jennifer E. Rothman
February 26, 2022

On Thursday, the Federal Circuit decided In re Elster and reversed the Trademark Trial and Appeal Board’s (TTAB) rejection of a trademark application by Steve Elster to register “Trump Too Small” on t-shirts and other apparel. An example of the relevant merchandise can be seen here.

The examining attorney for the Patent and Trademark Office (PTO) rejected the application as barred by both Sections 2(a) and 2(c) of the Lanham Act because it referred to President Trump without his consent and suggested a false connection to him. Section 2(a) bars the registration of a mark that “consists of or comprises . . . matter which may . . . falsely suggest a connection with persons, living or dead.” 15 U.S.C. § 1052(a). Section 2(c) bars the registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” The TTAB agreed that the registration should be rejected pursuant to Section 2(c) and therefore it did not reach the question of whether 2(a) also barred the registration.

On appeal, the Federal Circuit disagreed with the TTAB and concluded that the 2(c) bar to registration violated the First Amendment when it was applied in the context of a mark that was critical of a public figure. The appellate court relied heavily on the Supreme Court’s recent decisions in Matal v. Tam and Iancu v. Brunetti that struck down the 2(a) bars against registering marks that may disparage or bring into contempt or disrepute “persons, . . . institutions, beliefs, or national symbols” or that “consist[] or comprise” “immoral” or “scandalous matter.”

In light of these Supreme Court decisions, the Federal Circuit concluded that the 2(c) bar is a content-based speech restriction subject to either strict scrutiny or intermediate scrutiny review. Although the Court recognized that Section 2(c) furthers state interests in protecting the “named individual’s rights of privacy and publicity and protecting consumers against source deception,” Slip Op. at 4, 10-15, the court concluded that this did not overcome the speech interest in being able to comment critically on public figures, especially public officials, like former President Trump.

Of particular note from a right of publicity perspective, the Federal Circuit recognized that the right of publicity protects both personality-based and market-based interests and suggested in this instance that Trump’s primary interests in blocking such a registration sounded more in personality-based harms than in likely commercial ones. The court concluded that no one would think Trump had endorsed Elster’s “Trump Too Small” line of apparel given its evident criticism of Trump, nor did the panel think the mark would interfere with Trump’s own commercial ventures. Slip Op. 13-15.

The court concluded that in such an instance the "substantial" speech interest in commenting on a public figure outweighed the state interest in protecting publicity rights. “The government does not have a privacy interest in restricting speech critical of government officials or public figures in the trademark context—at last absent actual malice.” Slip Op. at 19. This analysis comports with the First Amendment analysis that Robert Post and I presented in our recent Yale Law Journal article, “The Right(s) of Publicity and the First Amendment.”

The Federal Circuit left a number of questions open:

First, from a trademark perspective it did not address whether Section 2(c) is constitutional more generally when not involving a mark that is explicitly critical of a public figure, but instead one that is trying to trade off the commercial value of a well-known person. I think courts, including notably the Supreme Court, are likely to allow such a bar in those instances even if the use of the mark does not cause likely confusion such that it would be barred by Section 2(d). The Federal Circuit did, however, suggest that there may be an overbreadth problem with 2(c) that could invalidate the entire provision.

Second, the court did not consider whether Section 2(a) applied in this instance or whether it was constitutional as applied here or more generally. Given the intentional reference to Trump and pointed criticism of him, it seems likely that if the court had analyzed this bar to registration, it would also have held it unconstitutional in this context.

Third, the court did not evaluate whether Trump himself or related organizations and companies that use his name could assert a dilution-based opposition to the registration on the grounds that it would tarnish the value of their marks that use Trump’s name or identity in them. However, it suggested that if Elster’s use had “exploit[ed] [Trump’s] commercial interests or dilute[d] the commercial value of his name, an existing trademark, or some other form of intellectual property” the result might be different. Slip Op. at 13 (citing Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562 (1977) and San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522 (1987)).

Finally, and this to me is the big-ticket item from a trademark (rather than First Amendment) perspective, the court did not consider whether the claimed mark functions as a mark in the first place. A comment on a former President is protected speech, but that does not make it a registerable trademark. This application seems like a prime candidate for a rejection on the basis of a failure to function as a mark.

From the right of publicity perspective, this case doesn’t lay down much new territory. As the Federal Circuit notes, political commentary is routinely protected from right of publicity and privacy claims, either on First Amendment grounds or because state laws expressly exclude such claims from the scope of liability or have newsworthiness or public interest defenses.

The Federal Circuit’s analysis highlights that 2(c) is part of a broader ecosystem of identity protection and also, as I have documented at length in my book on the subject, that the right of publicity includes concerns over both personality-based and market-based interests.

This decision may not ultimately lead to a registered mark for Elster or "Trump Too Small," but it does remind us of the many open questions left by Tam and Brunetti.