Guest Post by Samuel F. Ernst
As expected, a panel of the Federal Circuit held last week that the PTO violated the First Amendment when it refused to register without his permission a mark criticizing former President Donald Trump. Unfortunately, the Court did little more than that. The PTO had denied registration under a provision in the Lanham Act requiring it to do so when a mark “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.” The Court held that, as applied to the mark TRUMP TOO SMALL, “section 2(c) involves content-based discrimination that is not justified by either a compelling or substantial government interest.” But in an act of breathtaking judicial restraint, the opinion fails to provide any guidance as to what test the PTO should use in the future to avoid applying the statute in an unconstitutional manner as it processes thousands of routine registration decisions per year. Given that this issue will undoubtedly arise again, the PTO might justifiably wonder why it has been turned out onto Lafayette Square without any roadmap of what to do next.
Steve Elster’s trademark, TRUMP TOO SMALL as applied to shirts, is intended to “invoke 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.’” Hence, the mark is political speech at the heart of the First Amendment. Nonetheless, the PTO applied Section 2(c), determined that, unsurprisingly, the record did not contain any evidence that Trump consented to the registration of a mark calling his policies and “some features” too small, and therefore declined to grant the registration. In defense against Elster’s claim that this violated his free speech rights, the PTO justified the statute (or its mechanical application thereof) on the grounds that it was defending the right of publicity. But as the Court of Appeals found, “challenges under state-law publicity statutes are ‘fundamentally constrained by the public and constitutional interest in freedom of expression,’ such that the ‘use of a person’s identity primarily for the purpose of communicating information or expressing ideas is not generally actionable as a violation of the person’s right of publicity.’” In other words, as my previous post detailed, every jurisdiction that recognizes the right of publicity also recognizes some sort of First Amendment defense to the assertion of such a claim. The form these defenses take varies from state to state, and they are roundly criticized by scholars as offering insufficient free speech protection. The problem is, the PTO applies Section 2(c) to bar registration without any consideration of a First Amendment defense.
The Federal Circuit has decided that this application of the statute violated Mr. Elster’s rights, but declined to say which of the myriad First Amendment defenses to the right of publicity the PTO might apply in the future in making registration decisions of this sort. Instead, the Court suggested in dictum that the statute might be facially unconstitutional as overbroad, but declined to rule on that issue either:
As Elster raised only an as-applied challenge before this court … we have no occasion to decide whether the statute is constitutionally overbroad. We note, however, that section 2(c) raises concerns regarding overbreadth.
The Court explained that “‘a law may be overturned as impermissibly overbroad’ when ‘a ‘substantial number’ of its applications are unconstitutional, ‘judged in relation to the statute’s plainly legitimate sweep.’” The Court then enticingly offered that “[i]t may be that a substantial number of section 2(c)’s applications would be unconstitutional,” because “[t]he statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests.” “Nonetheless,” the Court concluded, it will “reserve the overbreadth issue for another day.” But why do we have to wait for another day? Now the PTO has to go to work violating the Constitution again, so that the same arguments can be briefed and argued again, to what end? One can only conclude that in addition to Trump, the opinion in In re Elster is also “too small.”
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 Professor of Law, Golden Gate University School of Law.
 15 U.S.C. § 1052(c).
 In re Elster, No. 20-2205, slip op. at 5 (Fed. Cir. Feb. 24, 2022).
 Elster, slip op. at 2 (quoting Elster’s registration application).
 The PTO also argued that it must deny registration to safeguard Trump’s right of privacy, an argument so weak as to deserve even less attention than this footnote. As the Court held, a public official does not enjoy a right of privacy protecting him from criticism except in the case of “actual malice,” which is “the publication of false information ‘with knowledge of its falsity or in reckless disregard of the truth.’” Elster, slip op. at 11 (quoting Time, Inc. v. Hill, 385 U.S. 374, 388 (1967)).
 Elster, slip op. at 15 (quoting Restatement (Third) of Unfair Competition § 47 cmt. c.).
 Elster, slip op. at 19.
 Elster, slip op. at 19 (quoting Wash. State Grange v. Wash. State Republican Party, 552 U.S. 442, 449 n.6 (2008) and New York v. Ferber, 458 U/S. 747, 769-71 (1982)).
 Elster, slip. op. at 19.
 Elster, slip op. at 20.