In Re ELSTER

Case: 20-2205 Document: 57 Page: 1 Filed: 02/24/2022
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: STEVE ELSTER,
Appellant
______________________
2020-2205
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
87749230.
______________________
Decided: February 24, 2022
______________________
JONATHAN TAYLOR, Gupta Wessler PLLC, Washington,
DC, argued for appellant. Also represented by GREGORY A.
BECK.
JOSHUA MARC SALZMAN, Civil Division, Appellate Staff,
United States Department of Justice, Washington, DC, ar-
gued for appellee Andrew Hirshfeld. Also represented by
BRIAN M. BOYNTON, DANIEL TENNY; THOMAS L.
CASAGRANDE, CHRISTINA J. HIEBER, THOMAS W. KRAUSE,
FARHEENA YASMEEN RASHEED, MOLLY R. SILFEN, Office of
the Solicitor, United States Patent and Trademark Office,
Alexandria, VA.
MATTHEW ALBERT HANDAL, New York, NY, as amicus
curiae, pro se.
______________________
Case: 20-2205 Document: 57 Page: 2 Filed: 02/24/2022
2 IN RE: ELSTER
Before DYK, TARANTO, and CHEN, Circuit Judges.
DYK, Circuit Judge.
Steve Elster appeals a decision of the Trademark Trial
and Appeal Board (“Board”). The Board affirmed an exam-
iner’s refusal to register the trademark “TRUMP TOO
SMALL” for use on T-shirts. The Board’s decision was
based on section 2(c) of the Lanham Act, 15 U.S.C.
§ 1052(c), and the Board’s finding that the mark included
the surname of a living individual, President Donald J.
Trump, without his consent. Because we hold that apply-
ing section 2(c) to bar registration of Elster’s mark uncon-
stitutionally restricts free speech in violation of the First
Amendment, we reverse the Board’s decision.
BACKGROUND
In 2018, Elster sought to register the phrase “TRUMP
TOO SMALL” in standard characters for use on shirts in
International Class 25. The class of goods encompasses:
Shirts; Shirts and short-sleeved shirts; Graphic
T-shirts; Long-sleeved shirts; Short-sleeve shirts;
Short-sleeved shirts; Short-sleeved or long-sleeved
t-shirts; Sweat shirts; T-shirts; Tee shirts;
Tee-shirts; Wearable garments and clothing,
namely, shirts. . . .
J.A. 1–2. According to Elster’s registration request, the
phrase he sought to trademark invokes a memorable ex-
change between President Trump and Senator Marco Ru-
bio from a 2016 presidential primary debate, and aims to
“convey[] that some features of President Trump and his
policies are diminutive.” J.A. 5.
The Patent and Trademark Office (“PTO”) examiner
rejected Elster’s proposed mark on two grounds. First, the
examiner concluded that the mark was not registrable be-
cause section 2(c) of the Lanham Act bars registration of a
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IN RE: ELSTER 3
trademark that “[c]onsists of or comprises a name . . . iden-
tifying a particular living individual” without the individ-
ual’s “written consent.” § 1052(c). Consistent with this
provision, Elster’s mark could not be registered because it
used Trump’s name without his consent. It did not matter,
according to the examiner, that the mark was “intended as
political commentary” because there is no statutory or
“case law carve[] out” for “political commentary.” J.A. 201.
The examiner rejected Elster’s contention that denying the
application infringed his First Amendment rights, finding
that the registration bars are not restrictions on speech,
and in the alternative, that any such restriction would be
permissible. In a separate decision, the examiner also de-
nied registration of the mark under section 2(a)’s false as-
sociation clause, which bars registration of trademarks
that “falsely suggest a connection with persons, living or
dead.” § 1052(a). The examiner here also rejected a First
Amendment defense.
Elster appealed both decisions to the Board, which con-
solidated the two cases. Elster argued that sections 2(c)
and 2(a) constituted impermissible content-based re-
strictions on speech. He contended that strict scrutiny
should apply, that neither provision was narrowly tailored
to serve a compelling government interest, and that any
government interest was outweighed by the First Amend-
ment interest in allowing commentary and criticism re-
garding a political figure. The Board affirmed the
examiner’s denial of the mark in a decision that rested
solely on section 2(c) grounds, finding it unnecessary to ad-
dress the rejection under section 2(a).
Although the Board recognized that it does not have
authority to declare statutory provisions unconstitutional,
it noted that prior Board decisions have addressed the con-
stitutionality of section 2(c) in light of the Board’s experi-
ence and familiarity with the purposes underlying the
statute, and it concluded that section 2(c) was not an
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4 IN RE: ELSTER
unconstitutional restriction on free speech. The Board ex-
plained, “even if Section 2(c) were subject to greater scru-
tiny,” it is narrowly tailored to advance two compelling
government interests: protecting the named individual’s
rights of privacy and publicity and protecting consumers
against source deception. J.A. 10. Elster appeals. We have
jurisdiction pursuant to 15 U.S.C. § 1071(a).
DISCUSSION
I
Section 2 of the Lanham Act requires the PTO to refuse
registration of certain categories of proposed trademarks.
In the last five years, the Supreme Court has held uncon-
stitutional two provisions of section 2. In Matal v. Tam,
582 U.S. ___, 137 S. Ct. 1744 (2017), the Court considered
a provision of section 2(a) of the Lanham Act, which di-
rected the PTO to deny registration of marks that “dispar-
age . . . or bring . . . into contempt[] or disrepute” any
“persons, living or dead,” 15 U.S.C. § 1052(a). The
eight-Justice Court was evenly split between two non-ma-
jority opinions, but both sides agreed that the provision vi-
olated the First Amendment. See Tam, 137 S. Ct. at 1765.
In Iancu v. Brunetti, 588 U.S. ___, 139 S. Ct. 2294 (2019),
the Court considered another provision of section 2(a) of
the Lanham Act, which directed the PTO to deny registra-
tion of marks that “consist[] of or comprise[] immoral . . . or
scandalous matter,” § 1052(a). Again, the Court held the
provision unconstitutional. See Brunetti, 139 S. Ct. at
2302. The two opinions in Tam and the majority opinion
in Brunetti each relied on a “core postulate of free speech
law”—that “[t]he government may not discriminate
against speech based on the ideas or opinions it conveys”—
and concluded that “[v]iewpoint discrimination doomed”
the two provisions. Id. at 2299.
The provision of the Lanham Act involved in this case,
section 2(c), prohibits registration of a trademark that
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IN RE: ELSTER 5
[c]onsists of or comprises a name, portrait, or sig-
nature identifying a particular living individual ex-
cept 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.
§ 1052(c). Neither Tam nor Brunetti resolves the constitu-
tionality of section 2(c). Both holdings were carefully cab-
ined to the narrow, “presumptive[] unconstitutional[ity]” of
section 2(a)’s viewpoint-based restrictions, Brunetti, 139 S.
Ct. at 2299 (quoting Rosenberger v. Rector & Visitors of
Univ. of Va., 515 U.S. 819, 829–30 (1995)), and Elster
agrees that section 2(c) does not involve viewpoint discrim-
ination, Oral Arg. at 45:49–46:35. We nonetheless con-
clude that as applied in this case, section 2(c) involves
content-based discrimination that is not justified by either
a compelling or substantial government interest.
II
While neither Tam nor Brunetti resolves this case, they
do establish that a trademark represents “private, not gov-
ernment, speech” entitled to some form of First Amend-
ment protection. Tam, 137 S. Ct. at 1760; see Brunetti, 139
S. Ct. at 2299. The cases also establish that trademarks
often “do not simply identify the source of a product or ser-
vice but go on to say something more” on “some broader
issue.” Tam, 137 S. Ct. at 1764 (Alito, J.). They frequently
“have an expressive content” and can convey “powerful
messages . . . in just a few words.” Id. at 1760. Even though
the government in the trademark area has not imposed an
absolute prohibition on speech, Brunetti further estab-
lished that denying trademark registration “disfavors” the
speech being regulated. 139 S. Ct. at 2297, 2300. We rec-
ognize, as the government contends, that section 2(c) does
not prevent Elster from communicating his message out-
right. But whether Elster is free to communicate his
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6 IN RE: ELSTER
message without the benefit of trademark registration is
not the relevant inquiry—it is whether section 2(c) can le-
gally disadvantage the speech at issue here.
The advantages of trademark registration are well
known, including serving as “prima facie evidence of the
validity of the registered mark and of the registration of
the mark, of the owner’s ownership of the mark, and of the
owner’s exclusive right to use the registered mark in com-
merce”; conferring “incontestable” status “once a mark has
been registered for five years”; and enabling a mark holder
to prevent the importation of goods “bearing an infringing
mark” into the United States. Tam, 137 S. Ct. at 1753 (in-
ternal quotation marks omitted) (first quoting B&B Hard-
ware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142 (2015);
then quoting id. at 143; and then quoting 3 J. Thomas
McCarthy, Trademarks and Unfair Competition § 19:9, at
19–38 (4th ed. 2017)).
Nonetheless, the government argues that because
trademark protection is the equivalent of a government
subsidy, it is not subject to First Amendment scrutiny so
long as viewpoint discrimination is not involved. This po-
sition has little support in the Supreme Court’s opinions in
Tam and Brunetti. Although the dissenting Justices in
Brunetti suggested that trademark registration might be
viewed as a condition on a government benefit, 139 S. Ct.
at 2308, 2317 (Sotomayor, J. concurring-in-part and dis-
senting-in-part), Justice Alito’s opinion in Tam, joined by
three other Justices, stated that the “federal registration of
a trademark is nothing like” government subsidy programs
that provide cash benefits to private parties, and that cases
addressing such programs are “not instructive in analyzing
the constitutionality of restrictions on” trademarks, 137 S.
Ct. at 1761 (Alito, J.). Justice Kennedy’s concurring opin-
ion in Tam, joined by the three remaining Justices, de-
clined to address the government subsidy framework,
suggesting it was not relevant. Id. at 1765, 1767 (Kennedy,
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IN RE: ELSTER 7
J.). And when Tam and Brunetti were before this court, we
held that trademark registration is not a government sub-
sidy. See In re Tam, 808 F.3d 1321, 1348–54 (Fed. Cir.
2015) (en banc); In re Brunetti, 877 F.3d 1330, 1342–45
(Fed. Cir. 2017).
In any event, even if a trademark were a government
subsidy, this is not a situation in which First Amendment
requirements are inapplicable. Elster’s mark is speech by
a private party in a context in which controversial speech
is part-and-parcel of the traditional trademark function, as
the Supreme Court decisions in Tam and Brunetti attest.
Under such circumstances, the effect of the restrictions im-
posed with the subsidy must be tested by the First Amend-
ment. See Legal Servs. Corp. v. Velazquez, 531 U.S. 533,
543, 547–48 (2001) (funding condition barring lawyers
from challenging constitutionality of welfare laws violated
the First Amendment); see also FCC v. League of Women
Voters, 468 U.S. 364, 396–97 (1984) (funding condition pre-
venting broadcasters receiving federal funds from editori-
alizing held unconstitutional).
We are also not convinced by the government’s argu-
ment that Lanham Act bars are comparable to speech re-
strictions in a limited public forum. To be sure, Justice
Alito’s opinion in Tam, joined by three other Justices, sug-
gested that the limited public forum doctrine, which per-
mits some viewpoint-neutral “content- and speaker-based
restrictions,” presented a “[p]otentially more analogous”
framework than the subsidy theory. 137 S. Ct. at 1763
(Alito, J.). But this is not a case in which the government
has restricted speech on its own property to certain groups
or subjects, a fact distinguishing it from nearly all of the
Supreme Court’s limited public forum cases. See In re Bru-
netti, 877 F.3d at 1346 (citing cases). While a limited public
forum need not be a physical place—it can be “metaphysi-
cal”—, our decision in In re Brunetti noted that when the
Supreme Court has analyzed speech restrictions in
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8 IN RE: ELSTER
metaphysical forums, such restrictions were always “teth-
ered to government properties” where the effects were later
felt. Id. at 1347 (citing Rosenberger, 515 U.S. at 830). No
similar situation exists for the trademark registration pro-
gram because “refusals chill speech anywhere from the In-
ternet to the grocery store.” Id. at 1348. We are not dealing
with speech in a limited public forum. The speech here is
entitled to First Amendment protection beyond protection
against viewpoint discrimination.
It is well established that speech ordinarily protected
by the First Amendment does not lose its protection “be-
cause the [speech] sought to be distributed [is] sold rather
than given away.” Heffron v. Int’l Soc. for Krishna Con-
sciousness, Inc., 452 U.S. 640, 647 (1981) (first citing Mur-
dock v. Pennsylvania, 319 U.S. 105, 111 (1943); and then
citing Schaumburg v. Citizens for a Better Env’t, 444 U.S.
620, 632 (1980)); see also Cardtoons, L.C. v. Major League
Baseball Players Ass’n, 95 F.3d 959, 970 (10th Cir. 1996)
(“[W]e see no principled distinction between speech and
merchandise that informs our First Amendment analysis.
The fact that expressive materials are sold neither renders
the speech unprotected . . . nor alters the level of protec-
tion.” (citations omitted)). Nor is expressive speech enti-
tled to a lesser degree of protection because it is printed on
a T-shirt. See Cohen v. California, 403 U.S. 15, 18 (1971)
(holding that a jacket bearing the words “Fuck the Draft”
is protected speech); see also Comedy III Prods., Inc. v.
Gary Saderup, Inc., 21 P.3d 797, 804 (Cal. 2001) (“Nor does
the fact that Saderup’s art appears in large part on a less
conventional avenue of communications, T-shirts, result in
reduced First Amendment protection.”); Ayres v. City of
Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997) (“The T-shirts
that the plaintiff sells carry an extensive written message
of social advocacy; . . . there is no question that the T-shirts
are a medium of expression prima facie protected by the
free-speech clause of the First Amendment.”).
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IN RE: ELSTER 9
That trademarked speech is entitled to First Amend-
ment protection and that the protection is not lost because
of the commercial nature of the speech does not establish
the relevant test. Whatever the standard for First Amend-
ment review of viewpoint-neutral, content-based re-
strictions in the trademark area, whether strict scrutiny,
see Reed v. Town of Gilbert, 576 U.S. 155, 163 (2015) (the
restriction must be “narrowly tailored to serve compelling
state interests”), or intermediate scrutiny, see Cent. Hud-
son Gas & Elec. Corp. v. Pub. Serv. Comm’n of N.Y., 447
U.S. 557, 566 (1980) (the restriction must “directly ad-
vance[]” a “substantial” government interest), there must
be at least a substantial government interest in the re-
striction. We proceed to examine the consequential First
Amendment interests and the claimed government inter-
ests.
III
The First Amendment interests here are undoubtedly
substantial. “Whatever differences may exist about inter-
pretations of the First Amendment, there is practically uni-
versal agreement that a major purpose of that Amendment
was to protect the free discussion of governmental affairs.”
Mills v. Alabama, 384 U.S. 214, 218 (1966); see also N.Y.
Times Co. v. Sullivan, 376 U.S. 254, 269 (1964) (“The gen-
eral proposition that freedom of expression upon public
questions is secured by the First Amendment has long been
settled by our decisions.”); Hustler Mag., Inc. v. Falwell,
485 U.S. 46, 50 (1988) (“At the heart of the First Amend-
ment is the recognition of the fundamental importance of
the free flow of ideas and opinions on matters of public in-
terest and concern.”). Indeed, “speech concerning public af-
fairs is more than self-expression; it is the essence of self-
government.” Garrison v. Louisiana, 379 U.S. 64, 74–75
(1964).
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10 IN RE: ELSTER
In particular, “the right to criticize public men” is “[o]ne
of the prerogatives of American citizenship.” Baumgartner
v. United States, 322 U.S. 665, 673–74 (1944). Such criti-
cism “does not lose its constitutional protection merely be-
cause it is effective criticism and hence diminishes [public
figures’] official reputations.” N.Y. Times, 376 U.S. at 273.
To the contrary, the First Amendment “has its fullest and
most urgent application” to speech concerning public offi-
cials. Monitor Patriot Co. v. Roy, 401 U.S. 265, 272 (1971).
Laws suppressing the right “to praise or criticize govern-
mental agents” generally cannot be squared with the First
Amendment. Mills, 384 U.S. at 219.
The government appears to recognize that the section
2(c) restriction implicates First Amendment interests but
contends that these interests are outweighed by the gov-
ernment’s substantial interest in protecting state-law pri-
vacy and publicity rights, grounded in tort and unfair
competition law. Those interests are defined in the rele-
vant Restatements. The Restatement (Second) of Torts de-
fines the tort of “Appropriation of Name or Likeness,” as
actionable when a tortfeasor “appropriates to his own use
or benefit the name or likeness of another.” Restatement
(Second) of Torts § 652C (1977). The comments elaborate
that the right, thought to be “in the nature of a property
right,” protects the “interest of the individual in the exclu-
sive use of his own identity, in so far as it is represented by
his name or likeness.” Id. at cmt. a. Recovery for appro-
priation also serves to “protect[] [an individual’s] personal
feelings against mental distress.” Id.
The Restatement (Third) of Unfair Competition recog-
nizes a separate cause of action that protects an individ-
ual’s publicity rights. An unfair competition claim arises
when a party “appropriates the commercial value of a per-
son’s identity by using without consent the person’s name,
likeness, or other indicia of identity for purposes of trade.”
Restatement (Third) of Unfair Competition § 46 (1995).
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IN RE: ELSTER 11
The question here is whether the government has an
interest in limiting speech on privacy or publicity grounds
if that speech involves criticism of government officials—
speech that is otherwise at the heart of the First Amend-
ment.
IV
We consider first the claimed right of privacy. Here,
there can be no plausible claim that President Trump en-
joys a right of privacy protecting him from criticism in the
absence of actual malice—the publication of false infor-
mation “with knowledge of its falsity or in reckless disre-
gard of the truth.” Time, Inc. v. Hill, 385 U.S. 374, 388
(1967). The government cites no case authority or treatise
that recognizes such an interest, and there is no claim here
of actual malice. In such circumstances, when the re-
stricted speech comments on or criticizes public officials,
the government has no interest in disadvantaging the
speech to protect the individual’s privacy interests. This
recognition goes back to the very origin of the right of pri-
vacy, as recognized by the Supreme Court in Bartnicki v.
Vopper:
As Warren and Brandeis stated in their classic law
review article: ‘The right of privacy does not pro-
hibit any publication of matter which is of public or
general interest.’
532 U.S. 514, 534 (2001) (quoting Samuel D. Warren &
Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev.
193, 214 (1890)).
In Time, the Supreme Court considered a New York
privacy statute that permitted monetary recovery for
“[a]ny person whose name, portrait or picture is used
within this state for advertising purposes or for the pur-
poses of trade without [] written consent,” a provision quite
similar in some respects to section 2(c) of the Lanham Act.
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12 IN RE: ELSTER
385 U.S. at 376 n.1. A private individual sued Life Maga-
zine after it published a story that falsely equated a play’s
plot with his family’s experience of being held hostage by
convicts in their suburban home. Id. at 378–79. The Court
held that absent proof of actual malice, “constitutional pro-
tections for speech and press preclude[d]” recovery under
the statute for “false reports of matters of public interest.”
Id. at 387–88.
The majority in Bartnicki later understood Time as re-
quiring that “privacy concerns give way when balanced
against the interest in publishing matters of public im-
portance.” 532 U.S. at 534. Those privacy concerns simi-
larly must give way when the speech at issue references a
public figure because public figures subject themselves to
“greater public scrutiny and ha[ve] a lesser interest in pri-
vacy than an individual engaged in purely private affairs.”
Id. at 539 (Breyer, J., concurring); see also id. at 534 (ma-
jority opinion) (“One of the costs associated with participa-
tion in public affairs is an attendant loss of privacy.”). With
respect to privacy, the government has no legitimate inter-
est in protecting the privacy of President Trump, “the least
private name in American life,” Appellant’s Br. 35, from
any injury to his “personal feelings” caused by the political
criticism that Elster’s mark advances.
V
The asserted interest in protecting the right of public-
ity is more complex. The government, of course, has an in-
terest in protecting against copying or misappropriation of
an existing mark, just as it has an interest in preventing
misappropriation of other forms of intellectual property. In
San Francisco Arts & Athletics, Inc. v. U.S. Olympic Com-
mittee, 483 U.S. 522, 526 (1987), a case not cited in either
party’s briefs, the Supreme Court considered the constitu-
tionality of a statute that granted the United States Olym-
pic Committee (“USOC”) “the right to prohibit certain
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IN RE: ELSTER 13
commercial and promotional uses of the word ‘Olympic’ and
various Olympic symbols.” The USOC sought to enjoin a
nonprofit’s use of “Gay Olympic Games” on letterheads and
mailings used to promote a nine-day athletic event, as well
as on T-shirts and other merchandise sold promoting the
games. Id. at 525. The nonprofit urged that its use of “Gay
Olympic Games” was protected First Amendment expres-
sion. Id. at 531–32. Focusing on the fact that the non-
profit’s use of the word Olympic “sought to exploit [the
word’s] ‘commercial magnetism’” and that the “image [the
nonprofit] sought to invoke was exactly the image” the
USOC “carefully cultivated,” the Court held that it was
valid for Congress to determine that these “unauthorized
uses, even if not confusing, nevertheless may harm the
USOC by lessening the distinctiveness and thus the com-
mercial value of the mark,” such that the statute was con-
sistent with the First Amendment. Id. at 539–41. The
holding did not address whether the statute could validly
prohibit speech critical of the Olympics, and in dicta sug-
gested that it was not “clear that [the statute] restricts
purely expressive uses of the word.” Id. at 536.
No similar claim is made here that President Trump’s
name is being misappropriated in a manner that exploits
his commercial interests or dilutes the commercial value of
his name, an existing trademark, or some other form of in-
tellectual property. See also Zacchini v. Scripps-Howard
Broad. Co., 433 U.S. 562, 575–76 (1977) (holding that state
law consistent with the First Amendment can create tort
liability for appropriating an individual’s performance
rights).
The government, in protecting the right of publicity,
also has an interest in preventing the issuance of marks
that falsely suggest that an individual, including the
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14 IN RE: ELSTER
President, has endorsed a particular product or service. 1
But that is not the situation here. No plausible claim could
be or has been made that the disputed mark suggests that
President Trump has endorsed Elster’s product. In any
event, trademarks inaccurately suggesting endorsement in
a manner that infringes the “right of privacy, or the related
right of publicity” are already barred by section 2(a) of the
Lanham Act, 2 a provision not invoked on appeal. 3 See, e.g.,
Bridgestone/Firestone Rsch., Inc. v. Auto. Club de l’Ouest
de la Fr., 245 F.3d 1359, 1363 (Fed. Cir. 2001) (“This pro-
tection of rights of personal privacy and publicity distin-
guishes the § 2(a) false suggestion of connection provision
1 This concern is also borne out by debates on section
2(c) evincing Congress’s desire to prevent the use of presi-
dential names to promote unsavory or other commercial
products. See, e.g., Hearings on H.R. 9041 Before the Sub-
comm. on Trademarks of the House Comm. on Patents, 75th
Cong. 79 (1938) (statement of Rep. Lanham) (“I do not be-
lieve that George Washington should have his name ban-
died around on every commonplace article that is in
ordinary use, because I think we have better ways of pre-
serving the name and the fame of George Washington than
in that manner.”); Hearings on H.R. 4744 Before the Sub-
comm. on Trademarks of the House Comm. on Patents, 76th
Cong. 18–19 (1939) (statement of Rep. Rogers) (“I quite
agree that Abraham Lincoln gin ought not to be used, but
I would not say the use of G. Washington on coffee should
not be permissible.”).
2 As stated previously, section 2(a)’s false association
clause bars registration of trademarks that “falsely suggest
a connection with persons, living or dead.” § 1052(a).
3 We note that the Board did not address the exam-
iner’s rejection of Elster’s proposed mark on section 2(a)
grounds, and the government on appeal similarly did not
raise section 2(a) as an alternative basis for affirming the
Board’s decision.
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IN RE: ELSTER 15
from the § 2(d) likelihood of confusion provision.”); Univ. of
Notre Dame Du Lac v. J.C. Gourmet Food Imps. Co., 703
F.2d 1372, 1376 (Fed. Cir. 1983) (“[Section] 2(a) was in-
tended to preclude registration of a mark which conflicted
with another’s rights, even though not founded on the fa-
miliar test of likelihood of confusion.”).
The right of publicity does not support a government
restriction on the use of a mark because the mark is critical
of a public official without his or her consent. The Restate-
ment of Unfair Competition recognizes that challenges un-
der 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 infor-
mation or expressing ideas is not generally actionable as a
violation of the person’s right of publicity.” Restatement
(Third) of Unfair Competition § 47 cmt. c.
Thus, for example, the Tenth Circuit held that parody
baseball trading cards, including cards “featuring carica-
tures of political and sports figures” accompanied by “hu-
morous commentary about their careers,” constituted
protected speech. Cardtoons, 95 F.3d at 962, 972. Alt-
hough the cards appropriated the commercial value of the
players’ names and likenesses without their consent, the
card producer had a “countervailing First Amendment
right to publish the cards” because the use of parody “pro-
vide[d] social commentary on public figures,” “an especially
valuable means of expression.” Id. at 968–69, 972.
[C]elebrities with control over the parodic use of
their identities would not use the power to ‘ration
the use of their names in order to maximize their
value over time[.]’ . . . They would instead use that
power to suppress criticism, and thus permanently
remove a valuable source of information about
their identity from the marketplace.
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16 IN RE: ELSTER
Id. at 975.
The California Supreme Court similarly concluded that
there is no right to restrict dissemination of a public fig-
ure’s likeness when the publication is intertwined with
parody or critical speech:
[T]he right of publicity cannot, consistent with the
First Amendment, be a right to control the celeb-
rity’s image by censoring disagreeable portrayals.
Once the celebrity thrusts himself or herself for-
ward into the limelight, the First Amendment dic-
tates that the right to comment on, parody,
lampoon, and make other expressive uses of the ce-
lebrity image must be given broad scope.
Comedy III, 21 P.3d at 807; 4 see also Titan Sports, Inc v.
Comics World Corp., 870 F.2d 85, 88 (2d Cir. 1989) (“[A]
court must be ever mindful of the inherent tension between
the protection of an individual’s right to control the use of
his likeness and the constitutional guarantee of free dis-
semination of ideas, images, and newsworthy matter in
whatever form it takes.”); ETW Corp. v. Jireh Pub., Inc.,
332 F.3d 915, 938 (6th Cir. 2003) (holding prints of Tiger
Woods reflecting his likeness constituted protected, crea-
tive expression in the face of a right of publicity challenge);
Hart v. Elec. Arts, Inc., 717 F.3d 141, 170 (3d Cir. 2013)
(finding use of a football player’s photo in a video game that
“imbue[d] the image with additional meaning beyond
simply being a representation of a player,” was “shielded
by the First Amendment”). New York courts have also rec-
ognized judicial exceptions to the state’s right of publicity
4 The court ultimately allowed the plaintiff to re-
cover on its right of publicity claim because the dis-
puted T-shirt created a “literal, conventional depiction[] of
The Three Stooges so as to exploit their fame.” Comedy III,
21 P.3d at 811.
Case: 20-2205 Document: 57 Page: 17 Filed: 02/24/2022
IN RE: ELSTER 17
statute for “newsworthy events or matters of public inter-
est,” “works of humor,” “art,” “fiction, and satire.” Lohan v.
Take-Two Interactive Software, Inc., 97 N.E.3d 389, 393
(N.Y. 2018).
The right of publicity is particularly constrained when
speech critical of a public official is involved. The Restate-
ment specifically notes that the right of publicity would be
unavailable to “a candidate for public office” who sought to
“prohibit the distribution of posters or buttons bearing the
candidate’s name or likeness, whether used to signify sup-
port or opposition.” Restatement (Third) of Unfair Compe-
tition § 47 cmt. b. Similarly, in Paulsen v. Personality
Posters, Inc., 299 N.Y.S.2d 501, 508–09 (Sup. Ct. 1968), a
comedian who had initiated a presidential campaign could
not enjoin the distribution of mocking campaign posters
bearing his likeness because the poster communicated
“constitutionally protected” political speech that “must su-
persede any private pecuniary considerations.”
The government has no valid publicity interest that
could overcome the First Amendment protections afforded
to the political criticism embodied in Elster’s mark. As a
result of the President’s status as a public official, and be-
cause Elster’s mark communicates his disagreement with
and criticism of the then-President’s approach to govern-
ance, the government has no interest in disadvantaging El-
ster’s speech.
Contrary to the government’s claim that section 2(c)
merely “involves a targeted effort to preclude federal regis-
tration that facilitates a particular type of commercial be-
havior that has already been banned by most states,” Gov’t
Br. 1, our review of state-law cases revealed no authority
holding that public officials may restrict expressive speech
to vindicate their publicity rights, and the government
cites no such cases. In fact, every authority that the gov-
ernment cites reaches precisely the opposite conclusion,
Case: 20-2205 Document: 57 Page: 18 Filed: 02/24/2022
18 IN RE: ELSTER
recognizing that the right of publicity cannot shield public
figures from criticism. See generally 1 J. Thomas McCar-
thy, The Rights of Publicity & Privacy § 2:4 (2d ed. 2020)
(“Every personal and property right must peacefully co-ex-
ist within the confines of the free speech policies of the First
Amendment.”). 5
In short, whether we apply strict scrutiny and the com-
pelling government interest test, or Central Hudson’s
5 The one case the government cites involving par-
ody or criticism of public figures held that a parody base-
ball card producer’s use of MLB players’ names and
likenesses was not actionable under a right of publicity
statute. See Cardtoons, 95 F.3d 959.
Most of the cases the government cites upholding the
right of publicity involve a routine use of a public figure’s
name or likeness to promote a product or the misappropri-
ation of the commercial value of their identity. Zacchini,
433 U.S. 562 (broadcaster airing human cannonball per-
former’s entire act); Jordan v. Jewel Food Stores, Inc., 743
F.3d 509 (7th Cir. 2014) (advertisement incorporating Mi-
chael Jordan’s name to promote grocery store); Hart, 717
F.3d 141, (video game using college football players’ photos
and likenesses); Bridgestone, 245 F.3d 1359 (tire manufac-
turer using French brand name on tires); Bi-Rite Enters.,
Inc. v. Bruce Miner Co., 757 F.2d 440 (1st Cir. 1985) (post-
ers depicting British rock group); Carson v. Here’s Johnny
Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983) (toilet
manufacturer incorporating entertainer’s “here’s Johnny”
catchphrase); Univ. of Notre Dame Du Lac, 703 F.2d 1372(cheese importer using same brand name as university);
Haelan Lab’ys, Inc. v. Topps Chewing Gum, Inc., 202 F.2d
866 (2d Cir. 1953) (chewing-gum producer using athlete’s
photo to promote product); Kimbrough v. Coca-Cola/USA,
521 S.W.2d 719 (Tex. Civ. App. 1975) (Coca-Cola advertise-
ment using football player’s photo).
Case: 20-2205 Document: 57 Page: 19 Filed: 02/24/2022
IN RE: ELSTER 19
intermediate scrutiny and the substantial government in-
terest test, “the outcome is the same.” Sorrell v. IMS
Health Inc., 564 U.S. 552, 571 (2011). The PTO’s refusal to
register Elster’s mark cannot be sustained because the gov-
ernment does not have a privacy or publicity interest in re-
stricting speech critical of government officials or public
figures in the trademark context—at least absent actual
malice, which is not alleged here.
VI
As Elster raised only an as-applied challenge before
this court, see, e.g., Appellant’s Br. 4; Oral Arg. 5:09–5:14,
we have no occasion to decide whether the statute is con-
stitutionally overbroad. We note, however, that section
2(c) raises concerns regarding overbreadth.
The First Amendment overbreadth doctrine recognizes
that “a law may be overturned as impermissibly overbroad”
when “a ‘substantial number’ of its applications are uncon-
stitutional, ‘judged in relation to the statute’s plainly legit-
imate sweep.’” Wash. State Grange v. Wash. State
Republican Party, 552 U.S. 442, 449 n.6 (2008) (internal
quotation marks omitted) (quoting New York v. Ferber, 458
U.S. 747, 769–71 (1982)). It may be that a substantial
number of section 2(c)’s applications would be unconstitu-
tional. The 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. It effectively grants
all public figures the power to restrict trademarks consti-
tuting First Amendment expression before they occur. 6 In
6 As interpreted by the PTO, section 2(c) has limited
application to private individuals because it requires con-
sent only if: “(1) the person is so well known that the public
would reasonably assume a connection between the person
and the goods or services; or (2) the individual is publicly
Case: 20-2205 Document: 57 Page: 20 Filed: 02/24/2022
20 IN RE: ELSTER
Tam, Justice Alito, joined by three other Justices, charac-
terized as “far too broad” a statute that would bar the
trademark “James Buchanan was a disastrous president.”
137 S. Ct. at 1765 (Alito, J.). Nonetheless, we reserve the
overbreadth issue for another day.
CONCLUSION
For the foregoing reasons, we hold that the Board’s ap-
plication of section 2(c) to Elster’s mark is unconstitutional
under any conceivable standard of review, and accordingly
reverse the Board’s decision that Elster’s mark is unregis-
trable.
REVERSED
connected with the business in which the mark is used.” In
re ADCO Indus. Techs., L.P., 2020 U.S.P.Q.2d 53786, 2020
WL 730361, at *10 (T.T.A.B. 2020).