Case: 20-2205 Document: 57 Page: 1 Filed: 02/24/2022
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`
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`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.
` ______________________
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`IN RE: ELSTER
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`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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`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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`IN RE: ELSTER
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`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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`[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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`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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`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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`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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`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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`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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`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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`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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`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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`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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`Case: 20-2205 Document: 57 Page: 15 Filed: 02/24/2022
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`IN RE: ELSTER
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`15
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`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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`Case: 20-2205 Document: 57 Page: 16 Filed: 02/24/2022
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`16
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`IN RE: ELSTER
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`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.
`
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`17
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`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 p