Supreme Court Upholds Rejection of "Trump Too Small" Trademark in Vidal v. Elster

On June 13, 2024, the Supreme Court decided that the Lanham Act’s names clause does not violate the First Amendment. The decision contrasts with the amicus brief filed by AIPLA on August 1, 2023. To read the opinion of the Court, please click here.

BACKGROUND

In 2018, Steve Elster sought to register the expression "TRUMP TOO SMALL" for use in the production of shirts, with the intention of using the mark as a form of political commentary. The trademark examining attorney at the US Patent and Trademark Office (USPTO) rejected the application, referencing two provisions of the Lanham Act: Section 2(c), which prohibits registering a mark that identifies a living individual without their consent, and Section 2(a), which prohibits marks that falsely imply a connection with living or deceased individuals. Elster appealed, claiming that these statutory bars against registration violated his First Amendment rights because they are not narrowly crafted to address a compelling government interest.

The Trademark Trial and Appeal Board (TTAB) upheld the examining attorney’s decision that Section 2(c) is constitutional but did not address Section 2(a). The United States Court of Appeals for the Federal Circuit, however, overturned the TTAB’s decision, stating that the refusal to register Elster’s mark under Section 2(c) violated the First Amendment by restricting the expressive content in the mark criticizing a government official.

On January 27, 2023, the United States petitioned the Supreme Court to hear the case. The Court granted certiorari on June 5, 2023. The question presented is whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.

OPINION OF THE COURT

The Supreme Court ruled that the USPTO did not violate the First Amendment when it refused to register the trademark "Trump Too Small." The decision upheld a federal law prohibiting trademarks that include other people's names, affirming that it does not violate the Constitution. This ruling reverses the U.S. Court of Appeals for the Federal Circuit's decision, which had found that barring the registration of "Trump Too Small" unconstitutionally restricted free speech.

Justice Clarence Thomas, writing for the majority, stated, "The history and tradition of restricting trademarks containing names is sufficient to conclude that the names clause is compatible with the First Amendment." The Court ruled unanimously that prohibiting trademarks with a living person's name without their consent does not violate free speech rights, noting that the decision is narrow in scope.

"The Lanham Act's names clause has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be restricted," Thomas wrote. "These name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause — a content-based, but viewpoint-neutral, trademark restriction — is compatible with the First Amendment."

Justice Thomas delivered the opinion of the court, except as to Part III. Justices Alito and Gorsuch joined that opinion in full; Chief Justice Roberts and Justice Kavanaugh joined all but Part III; and Justice Barrett joined Parts I, II-A, and II-B.

CONCURRING OPINIONS

Justice Kavanaugh, joined by Justice Roberts, concurred with the majority opinion except for Part III. He agreed that the names clause is constitutional, emphasizing the long history of restricting the use of another’s name in trademarks. Kavanaugh also suggested that a viewpoint-neutral, content-based trademark restriction might still be constitutional even without this historical context, and that this issue could be revisited in a future case.

Justice Barrett, joined by Justices Kagan, Sotomayor, and Jackson in part, concurred with the Court's conclusion that the names clause does not violate the First Amendment but disagreed with some of the Court's reasoning. She argued that the historical evidence cited by the Court does not sufficiently establish a tradition justifying the clause. Barrett believes a standard should be adopted, grounded in trademark law and First Amendment precedent, to determine when content-based trademark restrictions are permissible. She emphasized that such restrictions should be allowed if they are reasonable and serve the trademark system's purpose of source identification.

Justice Sotomayor, joined by Justices Kagan and Jackson, concurred with the judgment but disagreed with the Court's reliance on history and tradition to uphold the names clause's constitutionality. She argued that the constitutionality of viewpoint-neutral, content-based trademark registration restrictions should be evaluated using established First Amendment precedent rather than historical analogues. Sotomayor emphasized that such restrictions are permissible if they are reasonable and serve the trademark system's purpose of facilitating source identification, as the names clause does by preventing source confusion and protecting producer goodwill.