Supreme Court Weighs Whether Refusing to Register TRUMP TOO SMALL Trademark Violates First Amendment

On November 1, 2023, the U.S. Supreme Court engaged in a thought-provoking deliberation concerning the intersection of the First Amendment to the U.S. Constitution and U.S. trademark law, Vidal v. Elster, Supr. Ct. Case No. 22-704. The case considers whether the refusal of the U.S. Patent and Trademark Office (USPTO) to register the phrase TRUMP TOO SMALL as a trademark violates the free speech right under the First Amendment. The case highlights the ongoing debate surrounding political expression and government regulation.

In 2018, the applicant, Steve Elster, applied to register TRUMP TOO SMALL for T-shirts and sweatshirts in Class 25. Elster filed the application on an intent-to-use basis under Lanham Act § 1(b), though the goods appear to be available for purchase now on the TrumpTooSmall.com website.

The USPTO acted with unusual speed, issuing a first refusal to register less than six weeks after the application filing date. The examiner rejected the application under Lanham Act § 2(c), 15 U.S.C. § 1052(c). Relevant here, Section 1052(c) prohibits registering a trademark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual” without written consent.

Elster responded that the TRUMP TOO SMALL trademark was entitled to registration because it functioned as political commentary. His subsequent arguments during prosecution crystallized into a claim that prohibiting the registration of trademarks including the surname of such a controversial public figure as President Trump amounted to a violation of the free speech clause of the First Amendment.

The application went through several more rounds of refusals from the USPTO examiner and corresponding responses from Elster. In 2019, Elster appealed the repeated refusals to register to the USPTO’s Trademark Trial and Appeal Board (TTAB). As is common, the TTAB upheld the denial of registration, finding the Name Clause was viewpoint neutral. It therefore concluded that Section 1052(c) was consistent with the First Amendment, and the refusal was proper.

Elster appealed the TTAB’s ruling to the Court of Appeals for the Federal Circuit. Citing other recent Supreme Court rulings concerning the First Amendment and trademarks, it found Section 1052(c) unconstitutional as applied to the TRUMP TOO SMALL trademark, reversing the TTAB’s decision. (See In re: Steve Elster, Case No. 20-2205 (Fed. Cir. Feb. 24, 2022) (citing Matal v. Tam, 582 U.S. 218 (2017) (“Tam”); Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (“Brunetti”)).Examining the TRUMP TOO SMALL mark, the Federal Circuit found that prohibiting a registration would impair Elster’s right to criticize a government official, which it considered a core purpose of the First Amendment. While stopping short of declaring Section 1052(c) invalid, it would require the USPTO to evaluate each trademark application with the name of a living individual on a case-by-case basis. If it involved a public figure, refusing registration would violate the First Amendment; if not, a refusal would be proper.

The USPTO asked the Supreme Court to intervene. It framed the Name Clause in Section 1052(c) not as a restrictionon speech, but rather, as a condition on a federalbenefit. It observed that even if Elster could not register the TRUMP TOO SMALL mark, he could still sell T-shirts and other products with that slogan. The condition to the federal benefit—i.e., a registration providing enhanced mechanisms for restricting the speech of his competitors—was either being the person identified by the mark or having their consent.

The USPTO cited longstanding doctrines, such the Supreme Court’s government benefits jurisprudence and the limited public forum doctrine. While some of the justices appeared to find marginal value in those doctrines, they focused mainly on more practical considerations. Justice Gorsuch, for example, framed it as a matter of historical practice, speculating that there is longstanding common law and statutory history of living individuals having certain proprietary rights in their own names. Justice Sotomayor saw it even more simply as a question of whether the Name Clause is an infringement on speech, to which she replied, “[T]he answer is no.” She added that there was both a clear rational basis for restricting certain types of trademarks and longstanding precedent for it.

Elster argued that the Name Clause was an unconstitutional burden on the right to engage in critical speech about President Trump. In particular, his team argued that Section 1052(c) was unrelated to the purpose of trademark law—i.e., to prevent consumer confusion—and that it was therefore unconstitutional in the context of the TRUMP TOO SMALL mark. As in the Federal Circuit, Elster focused on the Supreme Court’s rulings in Tam and Brunetti, which found restrictions on registering certain words or phrases unconstitutional under the First Amendment.

Notably, the parties agreed that—unlike the Supreme Court’s rulings in the Tam and Brunetti cases—Section 1052(c) is viewpoint-neutral. The Brunetti case, for example, concerned an application for the trademark FUCT. There, the issue was subjectivity. Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibited registration of “scandalous” matter. It was the government’s subjective viewpoint that FUCT was offensive and therefore “scandalous” that resulted in the registration being refused.

Likewise, in Tam, the subject trademark—THE SLANTS—consisted of a derogatory term for Asians. The mark was refused registration under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which in relevant part, prohibited the registration of “disparag[ing]” words or phrases as trademarks. Whether it could be registered depended on a subjective viewpoint—i.e., whether the phrase THE SLANTS was disparaging. Further distinguishing that case, the applicant was an Asian-American band seeking to use THE SLANTS as its official band name and reclaim ownership over the derogatory term. There was an argument that, to express themselves fully and effectively, they needed to have THE SLANTS as the official band name, with the benefits of federal protection. There was also real expressive value in choosing that particular phrase as a source identifier.

In the Elster case, on the other hand, did not need to undertake any subjective evaluation of the meaning or impact of the TRUMP TOO SMALL mark. Rather, when the USPTO evaluates such a trademark, it merely asks:

1. Does the trademark refer to a particular living person?
2. If so, did that person consent to the registration?

The USPTO does not consider whether the mark is flattering, critical or conveys any other opinion of that person. Moreover, in the USPTO’s view, granting a registration was more likely to restrict free speech than refusing the registration, as the registration would authorize Elster to stop others from using the same phrase on similar goods.

Justice Jackson questioned whether the USPTO would take into account the impact in refusing a registration when determining whether or not the Name Clause was viewpoint neutral. She later clarified the question by asking whether it would be relevant if there was data indicating that consent “only occurs in one direction.” The USPTO responded that there simply was not enough data to make that determination. In any event, it argued that it would distort trademark law if a facially neutral requirement like consent could be treated as constitutionally suspect because the persons identified by the mark are more likely to consent in some circumstances than others.

There were also some questions about the implications the case might have for copyright law. In fact, the first question of the argument came from Justice Thomas, who broadly asked the USPTO how the government’s position that the Name Clause did not run afoul of the First Amendment “would affect copyright law.” The response was essentially that copyright and trademark law serve different purposes.

Justice Barrett raised the issue again later in the argument, asking what analysis would apply if there was a similar restriction on copyright, prohibiting a person from obtaining copyright protection if the book title featured the name of a living individual without their consent. There was some back and forth on this point, including a confusing discussion of whether copyright was a more “traditional public forum” than trademark. Yet, it did not reach any satisfactory conclusion, and in the author’s view, missed the point. Ultimately, the justices seemed to be satisfied that this case would not have a significant impact on copyright.

When it came time for counsel to present Elster’s position, the questioning was palpably more critical and consistent. Each Justice took turns scrutinizing Elster’s arguments. While there was some of the technical discussion raised during the USPTO’s presentation, the questioning for Elster’s counsel mainly focused on two issues: (1) that Section 1052(c) did not prevent Elster from using the TRUMP TOO SMALL mark on goods he sold; and (2) that granting the registration would be more likely to restrict speech (by Elster’s competitors) than denying the benefit of the registration to Elster.

Overall, it seemed clear that the justices viewed the issue in Elster as being much different than Tam and Brunetti, and that it would likely uphold Section 1052(c)—finding it does not violate the First Amendment and reversing the Federal Circuit ruling holding otherwise. In the end, while Elster will be able to sell TRUMP TOO SMALL t-shirts and other goods, it is doubtful he will be able to register that phrase with the USPTO, leaving it open for use by anyone.

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