Supreme Court Rejects TRUMP TOO SMALL Trademark
On June 13, 2024, the Supreme Court decided the case of Vidal v. Elster (22-704). The Justices evaluated whether the USPTO’s refusal to register a trademark containing criticism of a government official or public figure violates the Free Speech Clause of the First Amendment. The Court held 9-0 that plaintiff Steve Elster could not register the mark TRUMP TOO SMALL because the mark violates the Lanham Act prohibition on registering a trademark that includes a living person’s name without their consent, and that the refusal to register the mark did not violate Elster’s First Amendment rights.
In 2018, Elster attempted to register the phrase TRUMP TOO SMALL as a political commentary on then-President Donald Trump and his policies leading up to the 2020 Presidential election. The remark references a suggestive exchange between the former President and U.S. Sen. Marco Rubio during a 2016 presidential primary debate regarding the size of Trump’s hands. Elster planned on using the phrase on T-shirts and hats.
The USPTO Examiner rejected Elster’s application, citing the Names Clause of the Lanham Act. The Lanham Act prohibits an individual or entity from registering a mark identifying a living individual without their consent and bans marks that falsely suggest a connection with living or dead persons. 15 U.S.C. § 1052(a)-(c) (no trademark shall be refused registration unless it. . . “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent”).
The USPTO argued that it did not infringe on Elster’s freedom of speech by refusing his application because he could still use the phrase on t-shirts and hats as he wished, just without federal trademark protection. The USPTO examiner argued that the government’s protection of intellectual property rights can be subject to certain conditions without abridging Elster’s First Amendment protections. Elster appealed the USPTO examiner’s decision, arguing again that the decision infringed on his First Amendment rights. Elster highlighted the political nature of the phrase and argued that the Lanham Act is too broad to serve a compelling government interest and should be more narrowly tailored. On appeal, the Board upheld the examiner’s decision. Later, in 2022, the U.S. Court of Appeals for the Federal Circuit reversed the Board’s decision. That court ruled in Elster’s favor, finding that the USPTO’s refusal to register his mark violated his First Amendment right to criticize a government official or public figure. Generally, an individual’s right to engage in political discussion is the highest form of protected speech under the First Amendment, allowing individuals to criticize the government without fear of retaliation. The Supreme Court then agreed to hear the case.
Justice Thomas wrote the unanimous majority opinion, rejecting Elster’s attempt to register TRUMP TOO SMALL. This case marks the third time the Court has reviewed limitations on free speech in trademark applications. Previously, in Icanu v. Bruneti (18-302) and Matal v. Tam (15-1293), the Court held that certain viewpoint-based restrictions on trademark registrations constituted restrictions on the First Amendment’s Freedom of Speech clause. Thus, for the USPTO to deny a trademark application would require a much deeper inquiry against the government.
However, Thomas distinguished this case from Brunetti and Tam since the Names Clause of the Lanham Act is “viewpoint neutral,” unlike the trademark restrictions that discriminate based on viewpoint at issue in Brunetti and Tam. The restriction on using another person’s name without their consent is non-discriminatory. The Names Clause only looks to the content of the trademark at issue to determine whether it contains a person’s name and whether that person has given their consent. If the person named in the trademark at issue has not consented, the trademark cannot be registered.
As it stands, the Court upheld the Names Clause of the Lanham Act, barring the registration of a mark that identifies a living person without their consent. If you have questions about this decision or other concerns about your intellectual property rights, please don’t hesitate to contact us!
Read the full opinion here: https://www.supremecourt.gov/opinions/23pdf/22-704_4246.pdf
