Government registration, TRUMP TOO SMALL and the First Amendment

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Yet again, litigants have collided at the intersection of the First Amendment and trademark law. And like the Supreme Court’s holdings in Tam and Brunetti, the First Amendment was the surviving vehicle.

In this case, In re: Steve Elster, the U.S. Court of Appeals for the Federal Circuit reversed the decision of the Trademark Trial and Appeal Board’s refusal to register the mark, TRUMP TOO SMALL, for use on wearable garments, including T-shirts.

Elster’s intentions were to sell clothing printed with this would-be mark in order to convey, based on an exchange between Trump and Marco Rubio that, “some features of President Trump and his policies are diminutive.”  Those features were not revealed in the court’s decision.

The USPTO examiner rejected registration under Lanham Act 2(c) because the mark consisted of, or comprised, the name of a living person for the use of which Elster did not have Trump’s permission.  Elster, to no avail, countered that application of Section 2(c) was a government denial of his First Amendment rights. The government’s position was that Section 2(c) is the law, and that the USPTO’s refusal to allow registration is not a restriction on Elster’s use of the phrase: He could use it to his heart’s content and acquire common law rights through use, but he’d have to do so without registration.

On his failed appeal to the T.T.A.B., Elster argued that Section 2(c) constituted an impermissible content based restriction on his speech, and that if strict scrutiny was applied, the government could not show that Section 2(c) was narrowly tailored to serve a compelling government interest.

The T.T.A.B. didn’t buy his argument and affirmed the examiner’s refusal to register. He appealed to the Federal Circuit.  Referring to Tam and Brunetti, the Federal Circuit held that Tam and 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.’”  While close in point, neither Tam nor Brunetti, cases that dealt with disparaging and salacious marks, posed identical issues and did not resolve the constitutionality of Section 2(c).

Like Tam and Brunetti, with regard to Section 2(c), the court held that application of Section 2(c) to bar registration, at least as applied to the political commentary evoked by TRUMP TOO SMALL, involves impermissible content based discrimination.

Drawing on the Supreme Court’s Tam and Brunetti holdings, trademarks, the court held, represent private, not government, speech, and this speech is entitled to some level of First Amendment protection.

Also, the court recognized that while trademarks serve to identify source, in some cases they have come to say something more, often on a broader issue, and sometimes on an issue of public importance.  Some marks can have an expressive content and can convey powerful messages in a few well-chosen words.

While failure to register a mark is not an absolute government prohibition on the use of the mark, denial of registration serves to disfavor the speech sought to be registered. Registration would provide governmental benefits; denial disadvantages the speech, for example, loss of the registration serving as prima facie evidence of the validity of the registered mark and the owner’s ownership of the mark.

The First Amendment interests here were substantial, as one very important role of the First Amendment is to protect the free discussion of governmental affairs. That this speech is of a commercial nature, that is, it emblazons clothing sold for a premium price, is of no matter.

To survive the government’s attempt to regulate speech, even in Trademark Land, there must be shown a narrowly tailored regulation and substantial government interest in the restriction.

The government was unable to establish any valid interest that could overcome Elster’s First Amendment right. His purpose was to communicate his disagreement and criticisms of Trump’s approach to governance.

As to this, there could be no valid government interest advanced that could serve to disadvantage Elster’s efforts. The T.T.A.B.’s application of Section 2(c) to Elster’s TRUMP TOO SMALL mark was held “unconstitutional under any conceivable standard of review.”

James B. Astrachan is a partner at Goodell, DeVries, Leech & Dann, LLP and has written about and taught Trademark Law and Unfair Competition for over two decades.