Trademark Registration of Political Messages for Expressive Merchandise–In re Elster (Guest Blog Post)

By guest blogger Lisa Ramsey, Professor of Law, University of San Diego School of Law

Federal Circuit holds refusal to register a political message for T-shirts violates the First Amendment, but fails to acknowledge that these types of registrations can chill expression

On February 24, 2022, the Federal Circuit Court of Appeals held in the case In re Elster that Section 2(c) of the Lanham Act was an unconstitutional regulation of expression as applied to an applicant who attempted to register the political message “Trump Too Small” as a mark for T-shirts. (This provision of the federal trademark law known as the Lanham Act is codified in 15 USC 1052.) Other commentators have provided an excellent summary of the Federal Circuit’s opinion, see, e.g., Rebecca Tushnet, Jennifer Rothman, and John Welch, so this blog post will focus on the implications of the decision rather than provide a detailed summary of it. Some background details are set forth below to provide context for the discussion that follows.

As explained in the Federal Circuit’s opinion, Steve Elster claimed that he filed this intent-to-use application to register the phrase “Trump Too Small” as a mark for T-shirts because this proposed mark “invokes a memorable exchange between [former] President Trump and Senator Marco Rubio from the 2016 presidential primary debate, and aims to ‘convey[] that some features of President Trump and his policies are diminutive.’” The examining attorney at the United States Patent and Trademark Office (USPTO) refused to register the proposed mark on the ground the phrase falsely suggests a connection with a person (here Donald Trump) in violation of Lanham Act Section 2(a), and also because this mark violates Section 2(c) of the Lanham Act. Section 2(c) bars registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” Elster did not have Trump’s consent to register this mark for any goods or services.

Sections 2(a) and 2(c) both protect an individual’s right of privacy and right of publicity in trademark law by preventing the unauthorized registration of a person’s name, signature, or image. (For more information on the rights of privacy and publicity, which are primarily protected by state law, see Rothman’s Roadmap to the Right of Publicity.) These laws can also protect consumers against deception regarding a product’s source. Importantly, Section 2(c) can also apply when the expression is not false or misleading, such as where the mark criticizes the identified individual and is unlikely to cause confusion about that person’s connection to the products for sale. In Elster, the USPTO’s Trademark Trial and Appeal Board affirmed the examiner’s refusal to register the mark on Section 2(c) grounds and found it unnecessary to address the Section 2(a) rejection. Elster appealed the decision to the Federal Circuit.

At the USPTO and in the Federal Circuit, Elster claimed that he has a free speech right to register his political phrase as a mark for T-shirts, and he cited the US Supreme Court cases Tam and Brunetti in support of his argument. Tam and Brunetti held that trademark laws that suppress or chill the content of expression can implicate the First Amendment. In those cases, the Court determined that the Lanham Act Section 2(a) provisions which banned registration of matter that is disparaging, immoral, or scandalous discriminated based on the viewpoint of the expression in violation of the Free Speech Clause of the First Amendment. The Federal Circuit noted in Elster that Section 2(c) “does not involve viewpoint discrimination”, but it still applied the US Supreme Court’s First Amendment jurisprudence to evaluate the constitutionality of Section 2(c) since this law regulated expression based on its content. The government argued this provision is constitutional on its face and as applied to Elster’s proposed mark because the law is narrowly tailored to serve the compelling government interests of protecting the named individual’s rights of privacy and publicity, and of protecting consumers against source deception.

The Federal Circuit disagreed. It held that Section 2(c) violated the First Amendment as applied to Elster’s political speech, and suggested the law might also be an overbroad regulation of expression without deciding the issue. Like the US Supreme Court in Tam and Brunetti, the Federal Circuit in Elster declined to decide whether trademark laws that regulate speech based on its content are subject to “strict scrutiny and the compelling government interest test, or Central Hudson’s intermediate scrutiny and the substantial government interest test.” There was no need to decide this issue because the court held “the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice, which is not alleged here.” As Section 2(c) “involves content-based discrimination that is not justified by either a compelling or substantial government interest,” the law was unconstitutional as applied to Elster’s trademark application.

Elster may have won his appeal at the Federal Circuit on the Section 2(c) rejection, but commentators have noted that he may still not obtain a registration for his proposed “Trump Too Small” mark for T-shirts. The reason is that this political message fails to function as a source-identifying trademark in this context. After Tam and Brunetti, the USPTO refused to register racial epithets and other offensive marks for clothing on the ground they failed to function as trademarks. Marks like “Trump Too Small” previously refused under Section 2(c) may also now be refused registration under the USPTO’s Trademark Manual of Examining Procedure (TMEP) rules on the ground they are merely informational or expressive matter that fails to function as a mark. See TMEP § 1202.04. As discussed in the TMEP, phrases used to convey “social, political, religious, or similar informational messages that are in common use or are otherwise generally understood” may not be perceived as a mark for certain goods or services. This fact is especially true when those messages are used on or in connection with the sale of apparel and other types of expressive merchandise that are used to convey messages when worn or used. Applications to register words displayed in a decorative manner on T-shirts and other clothing may also be refused registration on the ground they are merely ornamental mater that does not function as a trademark. See TMEP § 1202.03. However, some applicants may be able to overcome an ornamentation refusal by submitting evidence of use of the proposed mark on product labels and hang tags, and not just emblazoned across the face of the merchandise.

While others might not use the exact phrase “Trump Too Small” to criticize former President Trump in commercial or noncommercial contexts, this political message is unlikely to identify one person or entity as a single source of T-shirts, especially when that phrase is prominently displayed on the front or back of the products. Failure to function doctrine is an important tool in trademark law that can be used, and should be used, by the USPTO and courts to protect free expression and fair competition in this context.

One significant problem with the opinions in Elster, Tam, and Brunetti is that the Federal Circuit and US Supreme Court did not acknowledge that a trademark registration for a political or social message can be invoked to stop other people, organizations, and companies from using the language or symbol in the same way as the registrant. Elster’s proposed mark—like other political phrases—intrinsically conveys a non-source-identifying message. Granting one person or entity a registration in this context will make it easier for the trademark owner to suppress and chill the expression of competitors and others who want to use that message in connection with the sale of similar products. The trademark registration can be invoked in cease-and-desist letters, takedown requests submitted to online marketplaces, and court litigation, and lead to self-censorship, private censorship, and government censorship of this expression. This is especially a problem if the goods or services are artistic expression print and online publications, news services, entertainment services, apparel, and other types of expressive products or merchandise. Elster can still display the phrase “Trump Too Small” on T-shirts without a registration, but he may try to stop others from doing this exact same thing if he obtains a trademark registration for this political message.

Although the Federal Circuit did not recognize the harm of registering political messages as marks for apparel in Elster, the decision is still important and useful for free speech advocates. This is the first time after Tam and Brunetti that an appellate court has determined that a viewpoint-neutral trademark law is an unconstitutional regulation of expression. One implication of the Federal Circuit’s decision is that courts are more likely to subject other trademark laws that regulate the content of nonmisleading expression to constitutional scrutiny and conclude they are inconsistent with the First Amendment.

The next trademark law to be found unconstitutional may be trademark dilution laws which ban the use or registration of commercial expression that is likely to cause dilution by blurring or dilution by tarnishment of a famous trademark “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Commercial speech is protected under the First Amendment if it is not misleading, and regulations of truthful commercial expression must at least satisfy the intermediate scrutiny test in Central Hudson. Dilution laws are arguably not justified by a substantial government interest, are not narrowly tailored, and harm protected expression more than necessary. They ban, punish, and chill the nonconfusing use of words claimed as marks across industries based on speculative allegations of harm caused by messages that are new and different than the brand message conveyed by the famous mark. The dilution by tarnishment provision is also used to suppress offensive uses of trademarks, so this is an independent reason that law may be found unconstitutional.

The Elster opinion also has useful language for anyone defending a right of privacy or publicity lawsuit based on unauthorized use of a person’s name, image, or likeness to criticize public officials and convey other political expression. See Sections III-V. Some of the language could also be cited to support the argument that the First Amendment does not permit the scope of trademark rights in a mark to extend to non-source-identifying messages printed on a T-shirt:

It is well established that speech ordinarily protected by the First Amendment does not lose its protection ‘because the [speech] sought to be distributed [is] sold rather than given away.’…Nor is expressive speech entitled to a lesser degree of protection because it is printed on a T-shirt. See Cohen v. California, 403 U.S. 15, 18 (1971) (holding that a jacket bearing the words “Fuck the Draft” is protected speech); see also Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 804 (Cal. 2001) (“Nor does the fact that Saderup’s art appears in large part on a less conventional avenue of communications, T-shirts, result in reduced First Amendment protection.”); Ayres v. City of Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997) (“The T-shirts that the plaintiff sells carry an extensive written message of social advocacy; . . . there is no question that the T-shirts are a medium of expression prima facie protected by the free-speech clause of the First Amendment.”).

If the USPTO decides to register political messages like “Trump Too Small” (or “Make America Great Again”) as a mark for T-shirts, courts should find an accused infringer’s display of this language in an informational, expressive, decorative, or functional manner on the outside surface of T-shirts and other expressive merchandise is a fair use of this subject matter that is protected by the First Amendment. They could find this expression fails to function as a mark or is aesthetically functional in this context. Or courts could determine that the First Amendment requires owners of such marks to only have a narrow scope of rights and that they can only stop false statements about endorsement or sponsorship of the products, or uses of the mark that explicitly mislead the public regarding the source of the products for sale.