In the 2016 Republican primary debate, Senator Marco Rubio and Donald Trump had an exchange where senator Rubio joked about the size of Donald Trump’s hands alluding to another part of his anatomy. Referring to this exchange, Steve Elster began selling merchandise using the phrase “TRUMP TOO SMALL” and applied to register the phrase as a trademark. The Trademark and Patent Office rejected the trademark registration based on section 2 of the Lanham Act, which requires that the trademark applicant obtain consent when using the name, signature, or portrait of a particular living individual.
Elster appealed the decision, arguing that the refusal to register the trademark infringed on his First Amendment free speech rights by restricting his commentary and criticism of a public figure. The United States Court of Appeals for the Federal Circuit sided with Elster, stating that the government had no legitimate interest in protecting the privacy of Donald Trump, who the court considered to be the “the least private name in American life.” The court also mentioned that the statute leaves the Trademark Office no discretion to exempt other interests such as parody or criticism. The court concluded that “The PTO’s refusal to register Elster’s mark cannot 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—at least absent actual malice, which is not alleged here.”
The case made it to the Supreme Court and oral arguments were heard in November, with a decision expected in June. From the comments made by the judges during the hearings, it appears that the Supreme Court will reverse the lower court’s decision and uphold the rejection. Justice Sontomayor stated that Elster can sell shirts regardless and the government is not actually restricting his speech. Furthermore, Justice Sontomayor pointed out that Elster’s brand can obtain common law protections. Justice Gorsuch added that there has been a long tradition of similar content based restrictions on trademarks, suggesting it is just a First Amendment liberty.
I found this case particularly interesting when compared to Matal v Tam, which was briefly mentioned in class. In Matal v Tam, a group of Asian Americans formed a rock band called “The Slants”, and the Trademark Office refused to register the trademark based on another provision in section 2 of the Lanham Act that prohibited trademarks that may disparage any persons, living or dead. The court ruled that trademarks are private, not government speech and that the government can’t prohibit expression merely because it is offensive. Furthermore, the court ruled that the law was viewpoint discriminatory, which occurs when expression is treated differently by the government based on the viewpoint of the expression. I found the court allowing racially disparaging trademarks to be registered and not allowing the names of public figures to be used a bit inconsistent. If the Trademark Office only allows the trademarks of public officials that give consent, that essentially only allows one sort of viewpoint of a public official to be trademarked which can be seen as viewpoint discriminatory. Furthermore, the court’s comments in Elster’s can equally apply in Matal v Tam. The refusal to grant “The Slants” a trademark wouldn’t actually prevent the band from performing and they can obtain common law protections.
Freedom of expression and trademarks in Canada
After reading about the freedom of speech cases that were playing out in the US, I wanted to look at how Canadian courts have approached this question. As we learned in class, section 9 of the Trademarks Act outlines prohibited marks, including any mark that is “scandalous, obscene or immoral word or device”. There haven’t been freedom of expression arguments made in a trademark context in Canada but the Federal Court in 1992 allowed “MISS NUDE UNIVERSE” to be trademarked, finding the word “nude” acceptable. I suspect that Canadian courts will be more accepting of trademark restrictions because although freedom of expression is protected by the constitution, it is subject to reasonable limits whereas the American Constitution contains no similar clause and the First Amendment rights are more absolute.
What is considered “scandalous, obscene, or immoral” under section 9 is incredibly subjective and the guidelines are unclear. The Trademark Office has been very inconsistent with their application of section 9. The registration of “Lucky Bastard” for alcoholic beverages was rejected but they allowed the registration of “Fat Bastard” for wines. I don’t see how “Lucky Bastard” is any more obscene than “Fat Bastard”. This inconsistent application by the Trademark Office raises challenges for companies looking to protect their intellectual property. In my view, the ordinary reasonable person doesn’t need to be protected by the government by words that might be mildly offensive. The Trademark Office should not be a judge of what speech is considered acceptable except for severe speech that may constitute hate speech or criminal conduct.
Sources:
https://trumptoosmall.com/
https://www.smartbiggar.ca/insights/publication/offensive-trademarks-can-they-be-registered-in-canada-and-the-us-
https://www.npr.org/sections/thetwo-way/2017/06/19/533514196/the-slants-win-supreme-court-battle-over-bands-name-in-trademark-dispute
https://www.scc-csc.ca/judges-juges/spe-dis/bm-2004-04-05-eng.aspx#:~:text=Our%20Charter%20of%20Rights%20and,limit%20it%20in%20reasonable%20ways.
Communications Law