SCOTUS Confirms Rejection of TRUMP TOO SMALL Trademark Registration

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Law

SCOTUS Confirms Rejection of TRUMP TOO SMALL Trademark Registration

A section of the U.S. federal trademark statute that bars the registration of marks that make use of another’s name without his or her consent does not violate the First Amendment, the Supreme Court held in its opinion in Vidal v. Elster on Thursday. The closely-watched ...

June 14, 2024 - By TFL

SCOTUS Confirms Rejection of TRUMP TOO SMALL Trademark Registration

Image : Unsplash

Case Documentation

SCOTUS Confirms Rejection of TRUMP TOO SMALL Trademark Registration

A section of the U.S. federal trademark statute that bars the registration of marks that make use of another’s name without his or her consent does not violate the First Amendment, the Supreme Court held in its opinion in Vidal v. Elster on Thursday. The closely-watched case stemmed from the U.S. Patent and Trademark Office (“USPTO”)’s move to block Steve Elster’s bid to register TRUMP TOO SMALL for use on shirts and hats in a nod to a comment that Senator Marco Rubio made about Donald Trump’s “small hands” during a 2016 presidential primary debate. “And you know what they say about guys with small hands,” Rubio quipped.

The case landed before the nation’s highest court after Elster sought to federally register the TRUMP TOO SMALL mark only to be shut down by the USPTO, which refused registration in light of the “names clause,” a Lanham Act prohibition against the registration of trademarks that “[c]onsist of or comprise a name . . . identifying a particular living individual except by his written consent.” While the Trademark Trial and Appeal Board upheld the USPTO’s determination, despite Elster’s argument that the clause violates his First Amendment right to free speech, the U.S. Court of Appeals for the Federal Circuit reversed, prompting USPTO Director Kathi Vidal to seek intervention from SCOTUS. 

In arguments before the Supreme Court earlier this year, Elster, an attorney in California, asserted that the names clause restricts his right to free speech. More specifically, he claimed that the bar on registrations for name-centric marks without the consent of the named party amounts to viewpoint discrimination under the First Amendment, as living individuals are less likely to sign off on marks that are critical of them than ones that are flattering. 

Against that background, Elster argued that Trump would never sign off on the less-than-flattering phrase.

Trademarks & the Names Clause

The Supreme Court handed Elster a loss on Thursday, stating that the history of restricting trademarks containing names is sufficient to conclude that the names clause is compatible with the First Amendment, and at the same time, the “content-based nature of trademark protection” is similarly in line with “the historical rationales of trademark law.” 

“Restrictions on [registering] names have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another’s trademark,” Justice Clarence Thomas wrote for the majority. 

Delving further into the nature/function of trademarks, Thomas stated that the restriction on certain name-centric registrations reflects trademark law’s “historical rationale of identifying the source of goods and thus, ensuring that consumers know the source of a product and can evaluate it based upon the manufacturer’s reputation and goodwill.” (The problem here, according to the government, is that consumers might be confused about TRUMP TOO SMALL products, and assume that Trump, himself, is the source or otherwise authorized their sale.) Moreover, he noted that the names clause “respects the established connection between a trademark and its protection of the markholder’s reputation.”

Still yet, in applying these principles, Thomas stated that the court “has also recognized that a party has no First Amendment right to piggyback off the goodwill another entity has built in its name,” and ultimately, sees “no reason to disturb [the] longstanding tradition, which supports the restriction of the use of another’s name in a trademark.” 

> A note on scrutiny: Just because the names clause-induced prohibition on registrations is content-based does not mean that strict scrutiny applies, the court held. Due to the “uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment, a solely content-based restriction of trademark registration need not be evaluated under heightened scrutiny.” 

TLDR: There will (still) be no USPTO-issued registration for Elster’s TRUMP TOO SMALL mark. 

Trademarks vs. Trademark Registrations

The impact of the court’s decision is at least somewhat limited in that it applies exclusively in the context of trademark registration. While Elster may not enjoy the “increased trademark protections” associated with registration as if the USPTO agreed to register the TRUMP TOO SMALL mark, the court made a critical distinction between trademark rights and registrations in its opinion, stating that the USPTO’s denial does “not prevent Elster from communicating his message.” In refusing to register the mark, the USPTO also “did not restrict his preferred mode of expression, [as] Elster can still sell shirts displaying the same message [and] could use a different phrase (such as ELSTER APPAREL) as a source identifier to obtain the desired benefits of registration while continuing to sell shirts with his preferred message across the front.” 

Put simply, SCOTUS asserted that the trademark office’s denial “only bar[s] Elster from registering a mark asserting exclusive rights in another person’s name without their written consent.” 

As for what Elster plans to do, he said in the wake of the court’s decision that the ruling is “disappointing but not unexpected” and that he will continue to sell T-shirts bearing the TRUMP TOO SMALL mark with or without a registration.

THE BIGGER PICTURE: The TRUMP TOO SMALL clash is the latest example of the Supreme Court taking on a case that pits trademark law against the First Amendment, finding on two previous occasions that trademark restrictions that discriminate based on viewpoint violate the First Amendment. In Matal v. Tam, the court held that the Lanham Act’s bar on disparaging trademarks violated the First Amendment, with the justices agreeing that the bar in that case was viewpoint based because it prohibited trademarks, including THE SLANTS, based only on one viewpoint: “[g]iving offense.” 

Meanwhile, in Iancu v. Brunetti, the court held that the Lanham Act’s bar on trademarks containing immoral or scandalous matter, such as streetwear brand name FUCT, likewise violates the First Amendment, concluding that the bar in that case was viewpoint based because it prohibited trademarks based only on one viewpoint, immoral or scandalous matter, while permitting trademarks based on other viewpoints. 

The case is  Vidal v. Elster, No. 22-704 (SCOTUS).

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