In an era where political expression permeates every corner of public discourse, the intersection of free speech and trademark law has recently become a contentious battleground. The case of Vidal v. Elster—a dispute over the attempted trademark registration of the phrase “TRUMP TOO SMALL”—examines whether the names clause of the Lanham Act’s prohibition on trademarking a living individual’s name without their consent can withstand First Amendment scrutiny, especially when the mark in question serves as political commentary.
This case journeyed through the USPTO, the Trademark Trial and Appeal Board, the Federal Circuit, and ultimately landed before the Supreme Court, where the justices were tasked with balancing trademark restrictions against constitutional free speech rights. In this article, we delve into the procedural history, the reasoning behind the lower courts’ holdings, and the Supreme Court’s final determination—unpacking the implications for trademark jurisprudence and political expression alike.
In January 2018, Steve Elster filed an application with the United States Patent and Trademark Office (USPTO) to register the phrase “TRUMP TOO SMALL” as a trademark in International Class 25 in connection with the goods: “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.” The phrase “TRUMP TOO SMALL” references a 2016 presidential primary debate exchange between then-candidate Donald Trump and Senator Marco Rubio, serving as a satirical commentary intended to mock and critique Trump’s physical characteristics and policy positions.
The USPTO examining attorney refused Steve Elster’s application under Sections 2(c) and 2(a) of the Lanham Act. Section 2(c), i.e., the names clause, prohibits the registration of a mark that identifies a particular living individual without their written consent, which Elster had not obtained from President Donald Trump. Additionally, the application was denied for its potential to falsely suggest an association with Trump under Section 2(a), irrespective of Elster’s intent to use the mark as political commentary.
Elster appealed this refusal to the Trademark Trial and Appeal Board (TTAB), which upheld the USPTO’s decision, holding that the mark was unregistrable under the names clause due to the lack of consent from President Trump regardless of whether the phrase was intended as political commentary. The TTAB found it unnecessary to address the refusal based on Section 2(a).
Subsequently, Elster appealed to the United States Court of Appeals for the Federal Circuit, which reversed the TTAB’s decision. The Federal Circuit held that the application of the names clause in this context constituted a content-based speech restriction because it singled out marks for denial based on their communicative content—specifically, the use of a living individual’s name in a politically critical manner. Content-based restrictions are presumptively unconstitutional under the First Amendment unless the government can show under heightened scrutiny that the restriction is narrowly tailored to serve a compelling state interest. The government advanced several justifications for the application of Section 2(c), including ensuring that individuals can control the commercial use of their name without consent and avoiding the perception that an individual has endorsed or is associated with a particular product or service. The Federal Circuit, however, found these governmental interests insufficient and not narrowly tailored to justify the speech restriction in this case.
The Supreme Court unanimously reversed and held that the names clause is not subject to heightened scrutiny analysis and does not violate the First Amendment. Writing for the Court, Justice Thomas emphasized that trademark law, by its restrictions on indications of ownership and source, is per se content based, i.e., it regulates from whom the goods or services came. However, he argued, not all content-based restrictions are unconstitutional, particularly when they arise from legal frameworks with deep historical roots. Section 2(c), he explained, is such a framework. It operates as a viewpoint-neutral restriction, applying equally to all uses of a living individual’s name—regardless of whether the usage conveys praise, criticism, or neutrality. This distinguishes it from prior cases, such as Matal v. Tam and Iancu v. Brunetti, where the Court struck down trademark provisions for engaging in viewpoint discrimination.
In this context, the Court declined to apply heightened scrutiny, finding it unnecessary given the longstanding common law tradition underlying the names clause. Justice Thomas observed that the names clause is deeply rooted in common law predating the First Amendment and codifies the longstanding tradition of prohibiting a person from obtaining a trademark of another living person’s name without consent, thereby protecting the latter’s reputation and good-will. By situating the names clause within this historical framework, the Court concluded that its application aligns with both historical practices and contemporary constitutional principles. However, Justice Thomas emphasized the narrow scope of the ruling, and explicitly disclaimed other content-based, but viewpoint neutral, trademark restrictions for adjudication down the road.
The Court’s decision included concurring opinions by Justices Barrett and Sotomayor, each taking issue with the Court’s heavy reliance on history and tradition. Instead, both justices would have adopted standards based on existing First Amendment jurisprudence to resolve the issue.
This decision underscores the Court’s recognition that trademark law, while inherently regulating speech, serves legitimate purposes that do not automatically run afoul of the First Amendment. The ruling reaffirms the role of historical legal traditions in evaluating the constitutionality of modern statutory provisions and clarifies the distinction between permissible content-based restrictions and impermissible viewpoint discrimination in the context of trademark regulation. However, the decision leaves open significant questions about how content-based restrictions in trademark law will be applied in future cases. The ruling does not provide a comprehensive framework for assessing content-based restrictions that may indirectly suppress protected speech or create chilling effects in politically charged or culturally sensitive contexts. As the Court’s decision focused on the narrow application of the names clause, future cases may revisit the constitutional boundaries of content-based restrictions. The balance between intellectual property law and free expression will remain a dynamic and evolving area of constitutional jurisprudence.