Saturday, February 26, 2022

Trademarks and free speech: the Elster case and "Trump Too Small"

The outcome

Steve Elster appeals a decision of the Trademark Trial and Appeal Board (“Board”). The Board affirmed an examiner’s refusal to register the trademark “TRUMP TOO SMALL” for use on T-shirts. The Board’s decision was based on section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c), and the Board’s finding that the mark included the surname of a living individual, President Donald J. Trump, without his consent. Because we hold that applying section 2(c) to bar registration of Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment, we reverse the Board’s decision.

From within the CAFC decision

Section 2 of the Lanham Act requires the PTO to refuse registration of certain categories of proposed trademarks. In the last five years, the Supreme Court has held unconstitutional two provisions of section 2. In Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017), the Court considered a provision of section 2(a) of the Lanham Act, which directed the PTO to deny registration of marks that “disparage . . . or bring . . . into contempt[] or disrepute” any “persons, living or dead,” 15 U.S.C. § 1052(a). The eight-Justice Court was evenly split between two non-majority opinions, but both sides agreed that the provision violated the First Amendment. See Tam, 137 S. Ct. at 1765. In Iancu v. Brunetti, 588 U.S. ___, 139 S. Ct. 2294 (2019), the Court considered another provision of section 2(a) of the Lanham Act, which directed the PTO to deny registration of marks that “consist[] of or comprise[] immoral . . . or scandalous matter,” § 1052(a). Again, the Court held the provision unconstitutional. See Brunetti, 139 S. Ct. at 2302. The two opinions in Tam and the majority opinion in Brunetti each 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 discri mination doomed” the two provisions. Id. at 2299.

In any event, even if a trademark were a government subsidy, this is not a situation in which First Amendment requirements are inapplicable. 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, as the Supreme Court decisions in Tam and Brunetti attest. Under such circumstances, the effect of the restrictions imposed with the subsidy must be tested by the First Amendment. See Legal Servs. Corp. v. Velazquez, 531 U.S. 533, 543, 547–48 (2001) (funding condition barring lawyers from challenging constitutionality of welfare laws violated the First Amendment); see also FCC v. League of Women Voters, 468 U.S. 364, 396–97 (1984) (funding condition preventing broadcasters receiving federal funds from editorializing held unconstitutional). We are also not convinced by the government’s argument that Lanham Act bars are comparable to speech restrictions in a limited public forum. To be sure, Justice Alito’s opinion in Tam, joined by three other Justices, suggested that the limited public forum doctrine, which permits some viewpoint-neutral “content- and speaker-based restrictions,” presented a “[p]otentially more analogous” framework than the subsidy theory. 137 S. Ct. at 1763 (Alito, J.). But this is not a case in which the government has restricted speech on its own property to certain groups or subjects, a fact distinguishing it from nearly all of the Supreme Court’s limited public forum cases. S


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