June 22, 2023

Volume XIII, Number 173

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How Big a Deal Is “Trump Too Small”? – SCOTUS Today

The question of whether a would-be trademark, “TRUMP TOO SMALL,” warrants a First Amendment exception to the Lanham Act’s prohibition on registering a living person’s name as a trademark without that person’s permission has now reached the United States Supreme Court. On June 5, 2023, in Vidal v. ElsterCase 22-704, the high court granted the United States Patent and Trademark Office’s (hereinafter, the “Government”) petition for certiorari to determine whether, under 15 U.S.C. § 1052(c), the refusal to register a trademark containing another person’s name violates the Free Speech Clause of the First Amendment when that mark implies criticism of a government official or public figure. As we wrote last year, one cannot normally trademark another person’s name, but in the case of Steve Elster’s trademark application for TRUMP TOO SMALL, the United States Court of Appeals for the Federal Circuit (the “CAFC”) held in In re Elster, 26 F.4th 1328, 2022 USPQ2d 195 (Fed. Cir. 2022), that one’s First Amendment right to make social commentary about a public figure trumps (bad pun intended) the Lanham Act. Whether the Supreme Court agrees with the CAFC soon will be determined.

How Did We Get Here?

As we explained last year:

The story begins in 2018, when Steve Elster sought to register the phrase “TRUMP TOO SMALL” for use on shirts. According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between President 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 Patent and Trademark Office (“PTO”) examiner rejected Elster’s proposed mark, concluding that the mark was not registrable because Section 2(c) of the Lanham Act bars registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” 15 U.S.C. § 1052(c). The PTO concluded that the mark was not registrable because it used President Trump’s name without his consent. . . . The PTO simultaneously rejected Elster’s contention that the denial of the registration violated his First Amendment right to free speech.

Elster appealed the denial of his application to the Trademark Trial and Appeals Board (the “Board”), raising the same constitutional argument that he has a First Amendment interest in commentary and criticism regarding a political figure. The Board affirmed the examiner’s denial of the mark and concluded that Section 2(c) was not an unconstitutional restriction on free speech. Elster appealed to CAFC.

In reaching its conclusion that the denial of the mark did violate Elster’s First Amendment rights, the CAFC made three essential findings:

  1. A trademark is private speech entitled to First Amendment protection.
  2. Elster’s First Amendment claim to a “TRUMP TOO SMALL” mark was valid, and “undoubtedly substantial” because the First Amendment is rooted in the “free discussion of governmental affairs.”
  3. The Government’s argument that its substantial interest in protecting state-law privacy and publicity rights outweighed Elster’s free speech rights was untenable. 

The Arguments Before the Supreme Court

The Government’s Petition for a Writ of Certiorari (the “Petition”) cut a wide swath in surveying the intersection of the Lanham Act. While we’ll examine the details of its arguments, we note that, in granting the writ, the Supreme Court expressed a succinct view of the issue to be decided.

The Court (speaking for at least four Justices) noted that “Section 1052(c) of Title 15 provides in pertinent part that a trademark shall be refused registration if it “[c]onsists of or comprises a name * * * identifying a particular living individual except by his written consent.” 15 U.S.C. 1052(c).” Thus, “[t]he question presented is as follows: Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”

In its petition for cert, the Government argued that Section 1052(c) does not violate the First Amendment because it is a viewpoint-neutral condition to trademark registration. (Id. at p. 13). The Government went on to argue that Section 1052(c) is not a restriction on speech at all, inasmuch as the owner of the mark remains free to use the mark in commerce. (Id. at p. 14). Said differently, Elster may still use TRUMP TOO SMALL on shirts, hats, or the like, but he simply cannot obtain a federal trademark registration for the phrase. Instead, the Government asserted, Section 1052(c) only prohibits registration of the trademark which is a governmental benefit not implicating speech. (Id.). The Government concluded its Petition with an interesting, and to these authors, persuasive argument that allowing registration of TRUMP TOO SMALL and other named-based trademarks could in fact chill free speech, rather than promote it:

The refusal under Section 1052(c) to register marks, like respondent’s, that criticize a government official or public figure does not “limit[]”political speech. To the contrary, it is the registration of marks like respondent’s—not the refusal to register them—that would “chill” such speech. After all, a trademark gives its owner the right to “prevent[] others from using the mark.” And registration serves only to bolster those “rights of exclusion.”

(Petition at p. 16-17) (citations omitted).  Indeed, in denying a trademark registration, no one at the USPTO is telling the applicant that he cannot say or publish TRUMP TOO SMALL repeatedly. In denying the registration, the USPTO is simply saying that the applicant cannot say it with an ® designation and that the applicant cannot prevent others of like mind from saying it based on a federal registration. While a registration of a such mark might make saying the phrase more financially lucrative, denial of a federal registration is not the equivalent of taxing speech, at least according to the Government.

The second issue that the Government raised relates to its assertion that the case presents a question that was left open in prior cases before the Supreme Court as to whether a Lanham Act bar on the registration of a trademark is a condition on a government benefit or a simple restriction on speech. (Id. at p. 11). Given the succinct nature of the Court’s statement of the issue presented, the extent to which, if at all, the Court will deal with this nuance is unclear. But the potential for its clear resolution is signaled by the fact that this issue was left open in two previous cases before the Court, Matal v. Tam, 137 S. Ct. 1744 (2017) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019). In Tam, the Court granted review of a Federal Circuit decision that had invalidated the Lanham Act’s bar on the registration of “disparag[ing]” marks. 15 U.S.C. 1052(a); see Tam137 S. Ct. at 1755. And in Brunettithe Court granted review of a Federal Circuit decision that had invalidated the Lanham Act’s bar on the registration of “immoral” or “scandalous” marks. 15 U.S.C. 1052(a); see Brunetti, 139 S. Ct. at 2298.

Elster’s Brief in Opposition to Petition for Writ of Certiorari (the “Opposition Brief”), not surprisingly, argued the opposite: that the Court should deny the petition because this narrow, as-applied challenge satisfies none of the Court’s traditional criteria for certiorari under Supreme Court Rule 10. (Opposition Brief at p. 2). Elster likewise argued that this is not a case in which the Court should determine the overall constitutionality of Section 1052(c), because the CAFC did not invalidate the statute itself, rather  it invalidated the USPTO’s decision to refuse registration of Mr. Elster’s trademark. (Id. at p. 12). Said differently, because the CAFC only made an as-applied determination, and did not make a determination as to the facial validity of the statute, the Supreme Court should not take up that broader question. (Id. at p. 12-13). Indeed, as we previously noted, the CAFC held that it had “no occasion to decide whether the statute is constitutionally overbroad” because Elster “raised only an as-applied challenge before this court,” though it noted its apprehension that Section 2(c) raises concerns regarding overbreadth. See In re Elster26 F.4th at 1339.

Elster likewise argued, as expected, that the Federal Circuit did not err in its decision when it correctly, in his view, determined that failure to register his TRUMP TOO SMALL trademark was a restriction on speech. As Elster claimed,

While section 2(c) may not be viewpoint based, it is undeniably a content-based restriction on speech. As this Court has made clear: “Government regulation of speech is content based if a law applies to particular speech because of the topic discussed,” such as when a law “defin[es] regulated speech by particular subject matter.” Section 2(c) is such a law. On its face, it requires a PTO examiner to assess the content of a mark to determine whether it “[c]onsists of or comprises a name . ..identifying a particular living individual,” or “the name . . . of a deceased President.” 15 U.S.C. § 1052(c). The law therefore “singles out specific subject matter for differential treatment, even if it does not target viewpoints within that subject matter.”

(Opposition Brief at p. 15) (citations omitted).

As we now know, at least four Justices viewed this case as worthy of review, and thus granted the Government’s Petition. The arguments from both parties will certainly be focused, given the specificity of the Court’s order granting review. The Petition and Opposition Brief, however, give a good indication as to the arguments that will be presented to the Court.

What Might The Supreme Court Do?

When we asked our colleague and past Acting Attorney General of the United States Stuart Gerson—who regularly writes on the Supreme Court—for his take on this case, he noted that the intersection between property and privacy rights and free expression offers a high probability of fatal collision. The Supreme Court has decided two important intellectual property cases in the past few weeks: Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023) and Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 599 U.S. ____ (2023). The trademark holders prevailed in both of those actions which, according to Gerson, says something about where the Court is on intellectual property cases and why at least four Justices voted to take “Trump Too Small.” Both of those decided cases turned on holdings that commercial interests outweighed countervailing arguments concerning speech or expression (alleged transformative nature of the photographic renditions of the work as published negated by the common commercial purpose of the photographer who created the original work and that of the magazine publisher; and alleged satirical nature of the Bad Spaniel’s dog toy negated by confusion that Jack Daniel’s itself would be seen as the source of the toy).

The grant of certiorari in Vidal v. Elster suggests that there is a core of the Court that believes that CAFC’s decision resting on the First Amendment is one worthy of further examination. But one has to wonder whether a demand for re-examination of the CAFC is likely to attract Justice Kagan (who wrote Jack Daniels and dissented in Warhol) or Chief Justice Roberts (who joined Kagan’s Warhol dissent and her Jack Daniels’ opinion for the Court). Chief Justice Roberts has been quite influential recently in bringing Justice Kavanaugh along and, if that occurs here, there would be at least five Justices voting for affirmance. While Steve Elster might have a commercial purpose in selling “Trump Too Small” tee shirts, it is as much a political expression as to Trump, whose name is no more exploited than it (or Obama’s or Martin Van Buren’s) is when it appears in a critical newspaper caption.  And therein lies a good part of the challenge—the product identifying trademark wholly merges with the protected message.

What do we mean by that? We mean that this case raises more than questions left open by Matal and Iancu. It also presents a circumstance in which the distinctions that the Court tried so hard to make in Jack Daniel’s Properties seem to vanish. TRUMP TOO SMALL is a mark, that if allowed to register, would wholly merge its expressive content with its accorded status as a registered source identifier of the T-shirts on which it will be printed. But the Supreme Court said just weeks ago in Jack Daniel’s Propertiesthat “when someone uses another’s trademark as a trademark—meaning, again, as a source identifier—” one has committed a “cardinal sin under the law” applicable to trademarks by undercutting the “primary mission” of trademark and “undermin[ing] that function” central to trademark protection. While TRUMP, it is said, may be many things, good and bad, there is no doubt that it is brand, both officially in the trademark sense and colloquially in the political sense.

The Jack Daniel’s Properties Court relied heavily on that notion of source identification as being central to any trademark analysis. But it also said that, if a potentially confusing, later-arriving mark is still serving that function, the offending mark gets no categorical immunity from infringement by also serving as an expressive function:

Suppose a filmmaker uses a Louis Vuitton suitcase to convey something about a character (he is the kind of person who wants to be seen with the product but doesn’t know how to pronounce its name). See supra, at 12. Now think about a different scenario: A luggage manufacturer uses an ever-so-slightly modified LV logo to make inroads in the suitcase market. The greater likelihood of confusion inheres in the latter use, because it is the one conveying information (or misinformation) about who is responsible for a product. That kind of use “implicate[s] the core concerns of trademark law” and creates “the paradigmatic infringement case.” G. Dinwoodie & M. Janis, Confusion Over Use: Contextualism in Trademark Law, 92 Iowa L. Rev. 1597, 1636 (2007). So the Rogers [v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)] test—which offers an escape from the likelihood-of-confusion inquiry and a shortcut to dismissal—has no proper application.

Nor does that result change because the use of a mark has other expressive content—i.e., because it conveys some message on top of source. Here is where we most dramatically part ways with the Ninth Circuit, which thought that because Bad Spaniels “communicates a humorous message,” it is automatically entitled to Rogers’ protection. 953 F. 3d, at 1175 (internal quotation marks omitted). On that view, Rogers might take over much of the world. 

See Jack Daniel’s Properties, 599 U.S. ____ (emphasis added).

As if to further drive home the point, the Court also said:

When, instead, the use is “at least in part” for “source identification”—when the defendant may be “trading on the good will of the trademark owner to market its own goods”—Rogers has no proper role. 221 F. Supp. 2d, at 414-415. And that is so, the court continued, even if the defendant is also “making an expressive comment,” including a parody of a different product. Id., at 415. The defendant is still “mak[ing] trademark use of another’s mark,” and must meet an infringement claim on the usual battleground of “likelihood of confusion.” Id. at 416.

Id. Indeed, based on these passages, one could well imagine the possibility of a “DIG” (dismissal of cert as improvidently granted) with a summary remand of the case to allow the CAFC to determine whether Jack Daniel’s Properties source-identifier analysis governed the result.

So, one wonders whether Elster presents open issues or pre-ordained results. Of course, one might attempt to distinguish the cases by noting that Elster deals with political speech and Jack Daniels Properties dealt with humorous speech. But that seems unsatisfying as the First Amendment protects both partisan and artisan, and the political commentator and political comedian, alike. In fact, the First Amendment recognizes that such roles often merge inseparably. From an analytical perspective, the First Amendment analysis of the CAFC may seem ultimately unsatisfying precisely because, intuitively, this does not feel like a First Amendment case. Refusing to register a trademark does not suppress speech—Mr. Elster can say the same things on the same shirts the day before and the day after his trademark application is rejected.

Further, the issue in Elster deals with 15 U.S.C. § 1052(c). Eliminating the prohibition on trademarking a living person’s name without his or her consent does not increase free speech because the proposed mark still must run the likelihood of confusion gauntlet—in other words, the mark may fail to register in any event. (The confusion issues simply weren’t present in Matal and Iancu under the related subsections of §1052, as there were no rival SLANTS or previously registered profane trademarks, but there are directly applicable, and largely unaddressed by the Supreme Court still in Jack Daniel’s Properties, 599 U.S. ____ (“the only question in this suit going forward is whether the Bad Spaniels marks are likely to cause confusion.”). Though the CAFC made the observation that there could be “[n]o plausible claim . . . that the disputed mark suggests that President Trump has endorsed Elster’s product,” the likelihood of confusion elements far exceed in number and complexity anything that adequately addressed by such a passing comment. The channels of trade and the like for TRUMP TOO SMALL? would be the same politically-charged ones as for candidate Trump’s own possible offerings or those he might license to others such as TRUMP2 or TRUMP II (promoting a second term) or even TRUMP TOO (when helping promote local candidates he favors and asking for support for himself as well)—and if that candidate applied for such registrations after Elster, or simply used those terms without registration, free speech and political discourse are not enhanced by letting Mr. Elster enjoin allegedly confusingly similar uses.

Yet, the Court granted cert. in Elster already knowing that Jack Daniel’s Properties would issue a few days later. The Supreme Court might be laying the groundwork to address in Elster the issue of confusion left open in Jack Daniel’s Properties. In the latter case, the Court remanded the confusion issue, but first noted that a parodying mark may avoid being confusing with the forerunner being parodied if the newer mark “create[s] contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis.”  Indeed it may, and it seems that in Elster it will. The grant in Elster, thus, sets the stage for the third critical intellectual property decision, possibly (though unlikely) within the 2023 calendar year, and certainly within the October 2023 Term. Practitioners, trademark applicants, and many others should keep tabs on this case to see how the litigants address Jack Daniel’s Properties in further briefing and to learn how the Supreme Court answers the question of whether the CAFC’s TRUMP trademark ruling created a First Amendment exception that is TOO BIG or TOO SMALL

©2023 Epstein Becker & Green, P.C. All rights reserved.National Law Review, Volume XIII, Number 168
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Kevin Elkins IP Lawyer Epstein Becker Green
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Clients depend on Kevin Elkins when facing litigation that can shape the trajectory of their business and turn to him for practical advice while navigating complex legal disputes. Kevin represents clients in intellectual property litigation, health care litigation, construction litigation, securities litigation, and commercial litigation matters. Clients ranging from publicly traded corporations in the health care and life sciences industries to individuals and closely held companies rely on Kevin when their interests are at stake.

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James P. Flynn, Epstein Becker Green, Corporate Counseling Lawyer, complex commercial matters attorney,
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JAMES P. FLYNN is a Member of the Firm in the Litigation and Labor and Employment practices. He serves as the General Counsel of Epstein Becker Green and the Managing Shareholder of the firm's Newark office, where he is based. His practice focuses on civil litigation and corporate counseling, including trial and appellate work in the area of intellectual property, complex commercial matters, and employment law. Mr. Flynn represents businesses in a broad spectrum of industries, including health care, pharmaceuticals, and financial services.

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STUART M. GERSON is a Member of the Firm in the Litigation and Health Care & Life Sciences practices, in the firm's Washington, DC, and New York offices. Much of Mr. Gerson's practice has been centered on providing representation to clients in the health care industry (including insurers, hospitals, pharmaceutical manufacturers, managed care providers, and private equity funds, among others). He has extensive experience litigating cases involving the cybersecurity of health care information, trade secrets, and other confidential data as well as civil...

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