A 'Trump Too Small' TM Registration Could Curb Free Speech
By Maya Tarr
(Published in Law360 on June 29, 2023)
When Steve Elster filed a federal trademark application in 2018 for the phrase "Trump Too Small" for use on T-shirts, the U.S. Patent and Trademark Office rejected his application on the basis that it violates Section 2(c) of the Lanham Act, a provision in the federal trademark statute limiting the registration of trademarks that include a "name, portrait or signature identifying a particular living individual" without their written consent.[1]
Elster appealed the USPTO's determination in 2019 by asserting that his First Amendment rights trump Section 2(c) of the Lanham Act, but the Trademark Trial and Appeal Board affirmed the USPTO decision.
Elster then appealed at the U.S. Court of Appeals for the Federal Circuit, which overturned the TTAB in a unanimous decision last year on the basis that Elster's free speech interests outweigh the privacy interests that Section 2(c) is designed to protect.
Now, the U.S. Supreme Court has agreed to hear the case.
In Katherine Vidal v. Elster, the phrase at issue — which references a back-and-forth between former President Donald Trump and Sen. Marco Rubio, R-Fla., during the 2016 presidential campaign — is politically charged and is the kind of speech that the First Amendment is designed to protect.
But the result of the Federal Circuit's decision, which found that Section 2(c) is unconstitutional content-based discrimination, if affirmed by the Supreme Court, will be quite the opposite than what was intended — it would give Elster a proprietary right to the phrase "Trump Too Small" that he could use to curb the free speech of others.
While Elster's First Amendment interests to express his social and political views should be preserved, this is a far cry from giving Elster an exclusionary ownership right to the phrase.
Because Section 2(c) of the Lanham Act is anchored in limiting privacy or publicity interests, the Federal Circuit framed the question at issue as
whether the government has an interest in limiting speech on privacy or publicity grounds if that speech involves criticism of government officials— speech that is otherwise at the heart of the First Amendment.[2]
The Federal Circuit took this further by indicating that
the government has no legitimate interest in protecting the privacy of President Trump, "the least private name in American life," Appellant's Br. 35, from any injury to his "personal feelings" caused by the political criticism that Elster's mark advances.[3]
However, granting Elster a federal trademark registration in "Trump Too Small" would have the unintended effect of restricting further political commentary of President Trump by others.
One must wonder whether the Federal Circuit would have come to the same conclusion if the mark at issue involved a less controversial or more well-liked political figure — for instance, would the Federal Circuit have held that Section 2(c) is unconstitutional on First Amendment grounds if the mark at issue was "No-Drama Obama?"
A trademark right, at its core, is a property right.[4] As observed by the Supreme Court, "the hallmark of a protected property interest is the right to exclude others."[5] As Thomas McCarthy stated in his preeminent trademark treatise, because a trademark is "undoubtedly a 'right to exclude,' a trademark is a form of 'property.'''[6]
So, granting Elster a trademark registration in "Trump Too Small" would give him an exclusionary right to the phrase.[7] If the principal objective here is to protect free speech principles, giving Elster an exclusionary right will not accomplish it. While Elster should not be restricted from using the phrase "Trump Too Small," this does not mean that he should own a property right in it.
While it is not mandatory to register a federal trademark to acquire trademark rights, which can also be acquired through common law use, a federal trademark registration provides the owner certain benefits including prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the registered mark in commerce.[8]
Moreover, federal registration provides constructive notice of an ownership claim in the mark, which eliminates a good-faith defense of adoption by a subsequent user without notice,[9] and after five years of continuous use, a registration can become incontestable, meaning it cannot be challenged, except in limited circumstances.[10]
As expressed in the writ of certiorari submitted by the director of the USPTO, Section 2(c):
does not impose any independent limits on the use in commerce of the marks that provision covers. Rather, Section [2(c)] simply makes unavailable the commercial benefits that federal registration of a mark entails.[11]
Affording trademark protection to the phrase "Trump Too Small" does not promote free speech interests. Rather, it pits Elster's commercial interests against the greater public's right of free speech.
Granting Elster an exclusionary right he could enforce against others is contrary to public interest and will have a chilling effect that will undermine the very First Amendment right the Federal Circuit aims to protect.
**Maya Tarr is the Principal and Founder of Carob Law P.C.
**The opinions expressed are those of the author(s) and do not necessarily reflect the views of their employer, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
[1] 15 U.S.C. § 1052.
[2] In Re: Steve Elster, 26 F.4th 1328, 1334 (Fed. Cir. 2022).
[3] Id.
[4] See 3 J. Thomas McCarthy, Trademarks and Unfair Competition § 2:10 (5th ed. 2023).
[5] College Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 673, 119 S. Ct. 2219, 2224, 144 L. Ed. 2d 605, 135 Ed. Law Rep. 362, 51 U.S.P.Q.2d 1065, 1999-1 Trade Cas. (CCH) ¶ 72551 (1999).
[6] 3 J. Thomas McCarthy, Trademarks and Unfair Competition § 2:10 (5th ed. 2023).
[7] See Id. at § 13:37.50.
[8] 15 U.S.C. § 1115(a); see 15 U.S.C. 1057(b).
[9] 15 U.S.C.A. § 1072.
[10] 15 U.S.C.A. § 1065.
[11] Petition for Writ of Certiorari in Vidal v. Elster at 6.
Maya Tarr