By Gabriela Monasterio, Staff Writer Vol. 20
The Federal Circuit announced on February 24, 2022 that the Lanham Act’s ban on trademarking names is unconstitutional as content-based discrimination. This reversed the Trademark Trial and Appeal Board (TTAB) decision, which denied an application for the phrase “Trump Too Small” because it contained the name of a person without their consent, a violation of 15 U.S.C. § 1052(c). The TTAB is a quasi-judicial body that decides whether an applicant has the right to register a mark or keep their registration after being challenged.
History of the Case
In re Steve Elster arose out of Steve Elster’s trademark application for the phrase “Trump Too Small” from 2018. The United States Patent and Trademark Office (USPTO) rejected Elster’s application several times because the mark he intended to register included “a name, . . . [that identified] a particular living individual” without consent. This language comes directly from 15 U.S.C. § 1052(c), the portion of the Lanham Act which identifies what types of marks may or may not be registered. The current Trademark Manual of Examining Procedure states that if “a name, portrait, or signature in a mark identifies a particular living individual . . . the mark can be registered only with the written consent of the individual.” This requirement also includes nicknames, pseudonyms, and stage names. Elster appealed the USPTO’s decision to the TTAB in December 2019. In July 2020, the TTAB held that Elster’s trademark application must be refused for violation of § 1052(c). Elster appealed to the Federal Circuit in August 2020.
Level of Scrutiny
While declining to establish a specific level of scrutiny for First Amendment cases involving trademarks, the Federal Circuit indicated that courts should use at least intermediate scrutiny. Generally, intermediate scrutiny requires that laws must further an important government interest by means that are substantially related to that interest. The court cited to Reed v. Town of Gilbertas an example of when a viewpoint-neutral but content-based restriction was evaluated under strict scrutiny, and Central Hudson v. Public Service Commission of New Yorkfor intermediate scrutiny, but ultimately punted the decision to the Supreme Court. The court focused primarily on the “substantial government interest” prong of intermediate scrutiny, and the government offered two interests: privacy and publicity.
The Federal Circuit characterized Elster’s trademark application as “speech by a private party” in a forum wrought with controversial speech. The court labeled the USPTO’s rejection of Elster’s application as content-based discrimination because the application was rejected for containing the name of a person who had not consented to the application. The court rejected the government’s argument that trademarks exist in a limited public forum, stating that trademarks are too ubiquitous in American society, and any restriction would chill speech “from the Internet to the grocery store.”
The Federal Circuit relied heavily on the decisions in Matal v. Tam and Iancu v. Brunetti in its decision. These two cases took down the prohibitions on disparaging and immoral marks in 15 U.S.C. § 1052(a) because they constituted viewpoint-based discrimination. The court acknowledged that while Matal and Iancu did not clearly resolve the matter in Elster, they helped establish that trademarks fall under the First Amendment.
The Federal Circuit found that the First Amendment interests were strong, especially the right of criticism, and that the government’s interests were weak considering the public nature of Trump’s life. The government alleged an interest in “protecting state-law privacy and publicity rights.” It claimed that people have an exclusive right in the use of their identities, and that they also have a right to the commercial value of that identity and to prevent its misappropriation. The Federal Circuit dismissed the privacy interest, as “there can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism in the absence of actual malice.” Turning to the right of publicity, the court conceded that there is an interest in preventing misappropriation, but that was not an issue here because no party claimed that “President Trump has endorsed Elster’s product.” The court also noted that even without 1052(c), there is still a cause of action for misappropriation under 15 U.S.C. § 1052(a).
The Federal Circuit supported its ruling with a Tenth Circuit case which held that parody baseball cards had a First Amendment right to use the names and likenesses of political and sports figures. It also cited to a California Supreme Court decision which held that the First Amendment right to comment on, parody, or criticize celebrities was superior to the celebrity’s right to publicity. Ultimately, the court held that the USPTO’s denial of Steve Elster’s application was unconstitutional because, as applied, it was content-based discrimination.
Impact in the Legal Community
Just a few days after the decision was announced, trademark and First Amendment scholars were abuzz, debating the impact of the case. On Twitter, Professor Lisa P. Ramsey of the University of San Diego expressed her disappointment that the court didn’t consider the chilling effect of the ruling on political speech. In her blog, Professor Jennifer E. Rothman of the University of Pennsylvania wondered why the Federal Circuit did not consider whether “Trump Too Small” was even a functional mark in the first place, as it violated another part of 15 U.S.C. 1052, the bar on implying a false connection with another person or organization, and oftentimes general political slogans are not source-identifying, the main purpose of trademarks. Professor Rebecca Tushnet from Harvard opined that the ruling likely only extended to non-confusing uses of a public official’s name as a trademark, so only uses that don’t lead a consumer to believe that the product or service is connected to the public official.
What does it mean for public figures?
Because this case focused on Donald Trump, a very public figure, we can best apply the ruling to public figures. Famous people who have voluntarily lived their lives in the public eye (like reality TV stars) are more likely trademark candidates than someone who was forcibly put in the limelight but now lives a more private life (like child stars). Politicians are also better trademark candidates than non-politicians, as there is a recognized right to political speech under the First Amendment.
What does it mean for you?
Your name probably won’t get trademarked, and even if someone tries, it probably won’t be successful because your right to privacy is stronger than Trump’s. Private individuals have stronger privacy rights than people like Trump because the lives of political figures like Trump are usually considered “in the public interest,” and even before Trump became a political figure, he lived a very open and public life through social media and reality TV.
Because this case was an as-applied challenge, the scope of the ruling is limited. While a facial challenge would have struck down the law entirely, this decision only invalidates the law as it relates to trademarks of the name of very famous or publicly-known people. This case was the worst set of facts for the government – they were dealing with a very well known, very political person who was the subject of the trademark. In future cases involving less prominent figures, or people who have made greater attempts to keep their private life private, courts may go the other way, holding that their right to privacy is implicated.
What does it mean for trademark applicants?
The USPTO and TTAB are subordinate to the Federal Circuit, so until the Supreme Court rules on this issue, the In re Elster opinion is law. Applicants may use the names of public figures of a similar stature to Trump (people who are incredibly public by nature and by design) in their trademarks. However, they should be careful about using the names of less famous people and more private figures.