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Did The USPTO's Refusal to Register "Trump Too Small" as a Trademark Violate Free Speech?

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In Vidal v. Elster, the U.S. Supreme Court will address whether the USPTO’s refusal to register the mark “TRUMP TOO SMALL” violates the free speech clause of the First Amendment of the U.S. Constitution by imposing a content-based restriction on speech that criticizes a government official or public figure.

Federal trademark registration by the United States Patent and Trademark Office (USPTO) confers certain benefits on the registrant. For example, registration serves as a notice of the registrant’s claim of ownership of the registered mark. Federal registration also serves as prima facie evidence of the validity of the registered mark and grants the registrant the exclusive right to use the registered mark in commerce, meaning the registrant can prevent others from using the registered mark, subject to certain conditions (such as, e.g., the other’s use is likely to cause confusion, or to cause mistake, or to deceive).  The USPTO has a staff of Trademark Examining Attorneys that review trademark applications to determine if each application meets all necessary requirements for registration. If an application does not meet all necessary requirements, an applicant can be refused federal registration.  Refusal of federal registration does not, however, necessarily mean the trademark applicant is restricted from using the mark in commerce, provided the mark has not already been registered to another. It does mean, however, that the applicant does not receive the above-described benefits.

In 2018, Steve Elster famously filed a trademark application with the USPTO seeking to register the mark “TRUMP TOO SMALL” to be printed on shirts like the one shown here.

According to Elster, the mark was political commentary by then-presidential candidate Marco Rubio about then-presidential candidate Donald Trump, made during a debate at the Republican Convention in Detroit, Michigan on March 3, 2016.

On examination, the USPTO refused Elster’s application on two grounds.[i] First, the examining attorney rejected the application on the basis that the mark violated Section 2(c) of the Lanham Act (15 U.S.C. § 1052(c)), which allows the USPTO to refuse a trademark if it:

(c) Consists 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.

The examining attorney’s reasoning was that Elster had not received consent from former president Donald Trump to use his name and, therefore, could not register a mark using Donald Trump’s name.  The examiner noted that it did not matter that the mark was “intended as political commentary” (according to Elster) because there is no statutory or “case law carve[d] out” for “political commentary.”

Unpersuaded by Elster’s argument that refusing his application infringed his right of free speech under the First Amendment to the United States Constitution, which states in pertinent part, “Congress shall make no law … abridging the freedom of speech …”, the examining attorney found that registration bars are not restrictions on speech and, alternatively, that any such restriction would be permissible.

Second, the examining attorney also refused to register the mark on the basis that the mark violated Section 2(a), which in relevant part allows the USPTO to refuse trademark registration if it:

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; ….

According to the examining attorney, Elster’s mark falsely suggested a connection with former president Donald Trump that did not exist and, therefore, violated Section 2(a).

Elster appealed both decisions to the Trademark Trial and Appeal Board (“the Board”), which affirmed the examining attorney’s refusal to register the mark based on Section 2(c) grounds.  Like the examining attorney, the Board rejected Elster’s argument that refusal to register the mark violated Elster’s right of free speech.  The Board explained that Section 2(c) is not a restriction on speech—it only sets criteria for trademark registration.  The Board also emphasized that Section 2(c) applies regardless of the viewpoint, political or not, conveyed by the mark seeking to be registered.

Elster then appealed to the Court of Appeals for the Federal Circuit (CAFC), which reversed the Board’s decision and found that the USPTO’s refusal to register Elster’s mark did, as a matter of constitutional law, violate Elster’s First Amendment right of freedom of speech.

The CAFC began its analysis by reflecting on the Supreme Court decisions in Matal v. Tam[1] and Iancu v. Brunetti[2], where the Supreme Court held that two provisions of section 2(a) violated the First Amendment because they both restricted viewpoint-based speech. While this case involves Section 2(c) as opposed to Section 2(a), and, therefore the CAFC noted that neither Tam nor Brunetti would resolve this case, the CAFC also recognized that these prior cases do establish that a trademark represents “private, not government, speech” entitled to some form of First Amendment protection.  The CAFC also noted that Tam and Brunetti further establish that trademarks often go beyond merely identifying the source of a product or service, and go on to say something more, frequently having an expressive content with the ability to convey “powerful messages … in just a few words.” Brunetti also established that denying trademark registration “disfavors” the speech being regulated. And, while a Section 2(c) refusal would not prevent Elster from communicating his message outright, the CAFC clarified that whether Elster is free to communicate his message without the benefit of trademark registration is not the relevant inquiry—it is whether a Section 2(c) refusal can legally disadvantage the speech at issue in this case.

The CAFC then analyzed the question of whether the speech at issue in this case was entitled to First Amendment protection and after examining various arguments from both sides, concluded that that the speech in this case is entitled to First Amendment protection beyond protection against viewpoint discrimination, and that such protection is not lost due to the commercial nature of the speech.  That recognition, however, was not enough to determine whether Section 2(c) in this case was constitutional. The CAFC proceeded to examine Elster’s First Amendment interests relative to the government’s claimed rights of privacy and publicity.  The conclusion:  the USPTO’s application of Section 2(c) against Elster’s trademark application in this case violated the First Amendment of the Constitution because the government’s claimed rights were far outweighed by Elster’s First Amendment rights, under any applicable legal test.  The court explained, quoting various Supreme Court cases, that, “speech concerning public affairs is more than self-expression: it is the essence of self government,” and “the right to criticize public men is one of the prerogatives of American citizenship,” and “the First Amendment has its fullest and most urgent application to speech concerning public officials.”

The CAFC further concluded that neither President Trump’s rights of privacy nor of publicity posed any obstacles to Elster’s registration, nor did they restrict a mark’s use on the basis that the public official being criticized did not give his or her consent.  The CAFC concluded that regardless of the legal test applied, “the outcome is the same”—in the absence of actual malice, which was not alleged in this case, the USPTO’s refusal to register Elster’s mark could not be sustained because the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context.

Because Elster only appealed the decision of the Board as it applied to his trademark application, the CAFC did not reach the question of the statute’s constitutionality per se, but the court did note that Section 2(c) “raises concerns regarding overbreadth.” The CAFC reserved resolution of that issue “for another day.”

Now the U.S. Supreme Court will decide once and for all whether the refusal to register Elster’s TRUMP TOO SMALL mark under Section 2(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.  The government sought review of the CAFC’s decision and all permissible briefing has been submitted, not only by Elster and the government,  but also by various third parties claiming interests in the resolution of the question presented.  Oral argument was heard in November 2023 and a decision is expected later this year.  

Although U.S. trademark practitioners may not often deal with marks that criticize government officials or public figures, the question is an important one for those who want trademark protection for such marks. For now, trademark applicants have the better argument that a Section 2(c) refusal of such a mark violates the trademark applicant’s First Amendment right of free speech. Whether that argument will ultimately prevail, only time and the Supreme Court will tell.


[1] 582 U.S. 218 (2017).

[2] 588 U.S. ___, 139 S.Ct. 2294 (2019).

[i] In Re Elster, 26 F.4th 1328 (Fed. Cir.  2022).