After Florida Senator Marco Rubio publicly mocked the size of former President Donald J. Trump\u2019s hands during a debate, the joke followed Trump throughout the 2016 presidential primaries into his presidency.[3] <\/a> While American popular culture turned the jape into a prevalent meme, Elster filed a federal trademark application for the mark TRUMP TOO SMALL for shirts and other wearable garments.[4] <\/a> Elster\u2019s mark capitalized on the sentiment of Trump\u2019s \u201chands\u201d being below average size to criticize the former president\u2019s policies.[5] <\/a> While the reader may find this mark entertaining, the Trademark Office was not as amused\u2014rejecting the application under Section 2(c) of the\u00a0 Lanham Act, which [6] <\/a> Elster Appealed.<\/p>\n Figure 1. Photograph of Elster\u2019s Shirts on trumptoosmall.com (2023), https:\/\/trumptoosmall.com\/.<\/p>\n Reversing the PTO\u2019s rejection on February 22, 2022, the Court of Appeals of the Federal Circuit held Section 2(c) as applied to the mark TRUMP TOO SMALL unreasonably burdened Ester\u2019s First Amendment rights.[7] <\/a> While the Federal Circuit Court determined the Supreme Court\u2019s previous Trademark\/First Amendment decisions do not resolve the constitutionality of Section 2(c), the cases do create a foundation for the Federal Circuit court\u2019s analysis.[8] <\/a><\/p>\n Elster\u2019s challenge to Section 2(c) does not start on a clean slate. The Supreme Court has addressed various components of 2(c)\u2019s neighbor, 2(a), in previous decisions. The Court\u2019s reasoning and holdings in Matal v. Tam<\/em> (\u201cTam<\/em>\u201d) and Lancu v. Brunetti<\/em> (\u201cBruntetti<\/em>\u201d) serve as guideposts for determining the constitutionality of Section 2 provisions concerning the First Amendment. More importantly, this case linage shows the incremental breakdown in the Court\u2019s reasoning originating in Tam<\/em>.<\/p>\n In Tam<\/em>, an Asian American band sought a federal trademark registration in THE SLANTS.[9] <\/a> The PTO denied the registration under Section 2(a), which bars the registration of a mark that contains \u201cmatter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.\u201d[10] <\/a> \u00a0However, the registrants claimed their use of the slur was not disparaging but empowering as they sought to \u2018reclaim\u2019 the term and \u201cdrain its denigrating force.\u201d[11] <\/a> After the registrants appealed the Trademark Trial and Appeal Board (TTAB) decision to affirm the refusal, the Federal Circuit found the Disparagement Clause facially unconstitutional under the Free Speech Clause of the First Amendment.[12] <\/a> The Supreme Court granted Certiorari.<\/p>\n Figure 2. Photograph of The Slants “Pageantry” album cover in Pageantry, The Slants,<\/em><\/p>\n https:\/\/theslants.com\/album\/1920849\/pageantry (last visited Nov. 20, 2023).<\/em><\/p>\n Affirming the Circuit Court, Justice Alito delivered the Supreme Court\u2019s opinion. While unregistered marks may still be used in commerce and may be enforced as state common law rights or under the Lanham Act itself, Alito highlighted the legal rights and benefits only conferred upon federally registered trademark holders.[13] <\/a> Additionally, the Court rejected the government\u2019s contentions that trademarks are government speech;[14] <\/a> a form of government subsidy;[15] <\/a> or that the Disparagement Clause falls within the \u201cgovernment program\u201d doctrine.[16] <\/a> The Court determined that denying registration to marks that offend a group under the disparagement clause is viewpoint discrimination because \u201cgiving offense is a viewpoint.\u201d[17] <\/a><\/p>\n Concluding government speech and subsidy arguments cannot uphold the Section 2(a) disparagement clause, the question turned to whether trademarks are considered commercial speech subject to relaxed scrutiny.[18] <\/a> Central Hudson <\/em>outlines the factors of commercial speech.[19] <\/a> However, the Court left this question open, and instead held that the disparagement clause cannot survive Central Hudson<\/em> review where the clause was not narrowly tailored to a substantial government interest. [20] <\/a> The disparagement clause served as a \u201chappy-talk clause\u201d and went further than serving the proposed government interest in protecting the orderly flow of commerce. [21] <\/a> Therefore, the Lanham Act\u2019s Section 2(a) disparagement Clause violated the Free Speech Clause of the First Amendment. [22] <\/a><\/p>\n The Supreme Court again confronted Section 2(a) in Brunetti<\/em> when the PTO denied registration to the mark FUCT under Section 2(a)\u2019s \u201cimmoral or scandalous\u201d clause. [23] <\/a> \u00a0Relying on Tam<\/em>, the Court agreed that if the \u201cimmoral or scandalous\u201d bar constituted viewpoint discrimination, it \u201ccollides with First Amendment doctrine.\u201d[24] <\/a> Writing the opinion of the Court, Justice Kagan analyzed dictionary definitions of \u201cimmoral\u201d and \u201cscandalous\u201d to conclude that the registration bar was facially viewpoint biased towards viewpoint that did not align with \u201cconventional moral standards.\u201d[25] <\/a><\/p>\n Figure 3. Photograph of FUCT label in fuct, https:\/\/fuct.com\/ (last visited Nov. 20, 2023).<\/em><\/p>\n Unlike Tam<\/em>, The Brunetti<\/em> court was not a landslide victory for the registrant. As the realities of applying the Tam<\/em> decision to other provisions of Section 2 set in, a few justices pushed back on the established doctrine.<\/p>\n Justice Sotomayor was quick to point out the repercussions of the majority opinion: the government cannot refuse to register \u201cthe most vulvar, profane, or obscene words and images imaginable.\u201d[26] <\/a> Instead of reading \u201cimmoral\u201d and \u201cscandalous\u201d as a unified standard, Sotomayor proposes another reasonable statutory interpretation. \u201cScandalous\u201d should be read as a separate feature barring the registration of \u201coffensive modes of expression.\u201d[27] <\/a> Therefore, a bar on \u201cimmoral marks\u201d\u2014transgressions of social norms\u2014is viewpoint based and unconstitutional, but the trademark registration system may reasonably restrict viewpoint neutral modes of expression as a form of content discrimination.[28] <\/a> Without clearly establishing what framework of government speech the trademark regime falls into, Sotomayor suggests \u201creasonable, viewpoint-neutral content discrimination is generally permissible.\u201d[29] <\/a> Trademark registration can rely on these \u201cviewpoint-neutral content regulations\u201d because the PTO is not restricting the applicant from using his mark sans registration, the PTO only denies him \u201cancillary benefits.\u201d[30] <\/a><\/p>\n Justice Breyer moves even further away from the Court\u2019s decision in Tam <\/em>in his concurrence. Breyer expresses doubt in the effectiveness of the category-based approach adopted in Tam<\/em>; \u201cThe First Amendment is not the Tax Code.\u201d[31] <\/a> Walking through an analysis of why trademark law does not squarely fit in commercial or government speech and the muddy line between viewpoint and content-based discrimination, Breyer ultimately concludes the Court should move away from its rigid First Amendment categories.[32] <\/a> Why shove a square block in a round hole? Especially if the results strike down reasonable regulations and restrictions in our trademark regime[33] <\/a>. Instead, Breyer urges the Court to utilize the categories as \u201crules of thumbs\u201d while balancing the proportionality of regulation\u2019s speech-related harm to the \u201crelevant regulatory objectives.\u201d[34] <\/a>Utilizing his balancing approach, Breyer embraces Justice Sotomayor\u2019s narrow interpretation of Section 2(a). He concludes that the government\u2019s interest in disincentivizing the use of vulgar language in commerce and protecting the \u201csensibilities of children\u201d outweighs the potential First Amendment harm of prohibiting \u201cscandalous\u201d marks.[35] <\/a> While his final analysis may stray from the true objectives of the trademark system, the Elster<\/em> Court may want to take a feather from Breyer\u2019s hat as they prepare their upcoming decisions.<\/p>\n In In re Elster<\/em> (\u201cElster<\/em>\u201d), the Federal Circuit Court relied on Tam<\/em> and Brunetti\u2019s<\/em> holding to establish that Trademarks are private, not government speech, and are therefore entitled to some form of First Amendment protection.[36] <\/a> Even though the denial of registration is not an absolute prohibition on the applicant\u2019s speech, the court recognized registration denial disfavors the speech being regulated.[37] <\/a>\u00a0 The court also reasoned content-based restrictions in trademark registration are not as suspect as viewpoint-based restrictions.[38] <\/a> Still, there must be substantial government interest in the restriction even if viewpoint-neutral content-based restrictions are not subjected to strict scrutiny.[39] <\/a><\/p>\n Finding Elster\u2019s First Amendment right to criticize political figures undeniably substantial, the court struggles to find any of the substantial interests proposed by the government to outweigh the First Amendment harm of Section 2(c)\u2019s restriction.[40] <\/a> The government argued that privacy and publicity grounds served as the government\u2019s interest in barring registrations under 2(c).[41] <\/a> However, The court found Trump, as a public figure, does not enjoy a right to privacy absent actual malice.[42] <\/a> Furthermore, the court reasoned that where there is no misappropriation or plausible suggestion that Trump endorsed the mark, there is no actionable claim to a right of publicity when the speaker seeks to criticize a public official without consent.[43] <\/a> Ultimately, the circuit court held the PTO\u2019s refusal of Elster\u2019s mark under Section 2(c) unconstitutional as applied.[44] <\/a> Despite Elster raising an as-applied challenge to 2(c), in dictum, the Court reasoned Section 2(c) is overbroad and potentially facially unconstitutional as a substantial number of its applications may violate free speech. [45] <\/a> Earlier this year, the Supreme Court granted certiorari to hear the case on June 5, 2023. [46] <\/a><\/p>\n While the Federal Circuit Court relied on the holdings of Tam<\/em> and Brunetti<\/em>, there are glaring concerns in the overall trajectory of these cases. The Justices are increasingly weary of their initial holding in Tam<\/em>, especially when applied to other provisions of Section 2. [47] <\/a> While the Court is months away from releasing opinions on Elster<\/em>, the oral arguments held on November 1, 2023, shed light on where the Justices\u2019 stand. The overall theme: We should uphold 2(c); tell us how.<\/p>\n [1]<\/a> State v. Drahota, 788 N.W.2d 796, 805 (Neb., 2010)( \u201cIf the First Amendment protects anything, it protects political speech and the right to disagree\u201d).<\/p>\n [2]<\/a> See generally <\/em>Matal v. Tam (Tam), 582 U.S. 218 (U.S., 2017); Iancu v. Brunetti (Brunetti), 139 S. Ct. 2294 (U.S., 2019).<\/p>\n [3]<\/a> Alexandra Jaffe, Donald Trump Has \u2018Small Hands,\u201d Marco Rubio Says<\/em>, NBC News, (Feb. 29, 2016, 4:25 AM), https:\/\/www.nbcnews.com\/politics\/2016-election\/donald-trump-has-small-hands-marco-rubio-says-n527791.<\/p>\n [4]<\/a> In re Elster, 26 F.4th 1328, 1330 (C.A.Fed., 2022)<\/p>\n [5]<\/a> Id.<\/p>\n [6]<\/a> 15 U.S.C. \u00a7 1052(c).<\/p>\n [7]<\/a> In re Elster, 26 F.4th<\/sup> at 1339<\/p>\n [8]<\/a> Id. at 1331.<\/p>\n [9]<\/a> Tam, 582 U.S. at 223<\/p>\n [10]<\/a> 15 U.S.C. \u00a7 1052(a).<\/p>\n [11]<\/a> Tam, 582 U.S. at 223.<\/p>\n [12]<\/a> Id.<\/p>\n [13]<\/a> See <\/em>Id. at 226. (stating registration on the principal register (1) serves as constructive notice of ownership; (2) is prima facie evidence of mark validity and the owner\u2019s exclusive right to use the mark in commerce; (3) incontestable status may be achieved after five years; and (4) a registered mark owner may stop the importation of infringing products).<\/p>\n [14]<\/a> See <\/em>Id. at 234-39 (Stating the government would be babbling and contradicting itself if marks were government speech and trademarks do not have characteristics that are identified in the public mind a government speech, therefore trademarks are private speech.)<\/p>\n [15]<\/a> See<\/em> Id. at 239-41 (while the \u201cgovernment is not required to subsidize activities it does not wish to promote\u201d the trademark system is nothing like government subsidy programs since the applicant must pay filing and maintenance fees).<\/p>\n [16]<\/a> See <\/em>Id. at 241-44 (Many government program doctrine cases are not relevant, and more analogous cases under the government program doctrine where the government created forums for private speech, viewpoint-based discrimination is forbidden).<\/p>\n [17]<\/a> Id. at 243.<\/p>\n [18]<\/a> Id. at 244<\/p>\n [19]<\/a> See generally, <\/em>Cent. Hudson Gas\u00a0& Elec. Corp. v. Public Serv. Comm’n,\u00a0447 U.S. 557, 566 (1980) (\u201cwhether (1) the speech concerns lawful activity and is not misleading; (2) the asserted government interest is substantial; (3) the regulation directly advances that government interest; and (4) whether the regulation is\u00a0\u2018not more extensive than necessary to serve that interest\u201d\u2019).<\/p>\n [20]<\/a> Tam, 582 U.S. at 245-46.<\/p>\n [21]<\/a> Id. at 246-47.<\/p>\n [22]<\/a> Id.<\/p>\n [23]<\/a> See <\/em>Brunetti, 139 S.Ct. at 2298; 15 U.S.C. \u00a7 1052(a) (\u201c[c]onsist[ ] of or comprise[ ] immoral[ ] or scandalous matter\u201d).<\/p>\n [24]<\/a> Id. at 2299.<\/p>\n [25]<\/a> Id. at 2300.<\/p>\n [26]<\/a> Id. at 2308 (Sotomayor, J., concurring).<\/p>\n [27]<\/a> Id.at 2310.<\/p>\n [28]<\/a> Id. at 2313.<\/p>\n [29]<\/a> Id. at 2317.<\/p>\n [30]<\/a>\u00a0Id. at 2317.<\/p>\n [31]<\/a> Id. at 2304 (Breyer, J., concurring).<\/p>\n [32]<\/a> Id. at 2304-06.<\/p>\n [33]<\/a> Id.at 2304.<\/p>\n [34]<\/a> Id. at 2306.<\/p>\n [35]<\/a> Id. at 2306-08.<\/p>\n [36]<\/a> In re Elster, 26 F.4th at 1331-32 (Discussion in Tam about the differences in other speech that is considered government and the trademark regime).<\/p>\n [37]<\/a> Id.; See supra <\/em>note 13 and accompanying text.<\/p>\n [38]<\/a>\u00a0See Generally <\/em>In re Elster, 26 F.4th. at 1331-33.<\/p>\n [39]<\/a> Id. at 1333-34.<\/p>\n [40]<\/a> See Generally Id.<\/em> at 1334-39.<\/p>\n [41]<\/a> Id. at 1334\u201335.<\/p>\n [42]<\/a> Id. at 1335.<\/p>\n [43]<\/a> Id. at 1336-38.<\/p>\n [44]<\/a> Id. at 1339.<\/p>\n [45]<\/a> Id. at 1339.<\/p>\n [46]<\/a> Vidal v. Elster, 143 S.Ct. 2579 (Mem) (U.S., 2023).<\/p>\n![\"\"](\"https:\/\/studentorgs.kentlaw.iit.edu\/ckjip\/wp-content\/uploads\/sites\/4\/2024\/02\/Picture1-300x177.png\")
<\/p>\nMatal v. Tam<\/em><\/strong> and Lancu v. Brunetti<\/em>: The History of Section 2 Challenges <\/strong><\/h4>\n
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<\/em><\/p>\nIn re Elster<\/em><\/strong>:<\/strong><\/a><\/h4>\n
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