sub-header

First Amendment Trumps Statutory Ban on Trademark Registration

| Jeremy Anapol

IN RE STEVE ELSTER

Before Dyk, Taranto, and Chen.  Appeal from the Trademark Trial and Appeal Board.

Summary: The Patent and Trademark Office violated the First Amendment by refusing to register the trademark TRUMP TOO SMALL absent consent from former president Donald Trump. 

In 2018, Steve Elster sought to register the phrase “TRUMP TOO SMALL” for use on shirts.  According to Elster’s application, the phrase invokes a memorable exchange between Donald Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to “convey that some features of President Trump and his policies are diminutive.”

The PTO Examiner rejected Elster’s mark under sections 2(c) and 2(a) of the Lanham Act.  Section 2(c) bars registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s written consent.  Section 2(a) bars registration of a trademark that “falsely suggest[s] a connection with persons, living or dead.”  Elster appealed to the Trademark Trial and Appeal Board, arguing that the Examiner’s application of sections 2(c) and 2(a) to Elster’s mark constituted impermissible content-based restrictions on speech.  The Board affirmed the Examiner’s denial of the mark in a decision that rested solely on section 2(c) grounds.  Elster appealed to the Federal Circuit.

The Federal Circuit held that Elster's First Amendment right to criticize a public figure supersedes any interest the government may have in protecting Trump’s privacy and publicity rights.  According to the court, “public figures subject themselves to greater public scrutiny and have a lesser interest in privacy than an individual engaged in purely private affairs.”  Thus, the Federal Circuit held that the Board’s application of section 2(c) to Elster’s mark was unconstitutional.

Elster never argued to the Federal Circuit that section 2(c) was facially unconstitutional.  His challenge focused solely on the application of that statute to his specific mark.  However, the Federal Circuit noted that section 2(c) raises concerns under the First Amendment overbreadth doctrine that might warrant overturning it in a future case.

Editor: Paul Stewart