** Logan Woodward, a Summer Associate in NRF’s Minneapolis Office, assisted with this article. Logan is supervised by attorneys who are licensed in the State of Texas. **

In June 2024, the Supreme Court held in Vidal v. Elster that § 1052(c) of the Lanham Act—prohibiting registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent”—does not violate the First Amendment. Vidal v. Elster, 602 U. S. ____ (2024).

Steve Elster, a California-based labor lawyer, attempted to register the trademark “TRUMP TOO SMALL” in connection with t-shirts and hats in 2018.

The phrase refers to a 2016 GOP presidential debate between Trump and Florida Senator Marco Rubio where Rubio made fun of Trump for allegedly having “small hands.” Elster argued to the USPTO that the mark was “political commentary” regarding Trump and was meant to show “some features of President Trump and his policies are diminutive,” according to Elster’s application.

The USPTO refused registration of the subject mark citing the statutory bars found in Sections 2(a) and 2(c) of the Lanham Act. Section 2(a) bars registrations that suggest a false connection with, or endorsement by, a person, and Section 2(c) bars registration of a mark that “consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent.” 15 USC §1052(a), (c). Elster did not have the requisite statutory consent.

Elster’s concerns regarding the constitutionality of these bars in view of the protections afforded by the First Amendment were rejected by the Examining Attorney. The Examining Attorney concluded that the statutory bars did not restrict speech, but that if they did so, that restriction was permissible as there was no carve-out in the law for political commentary.

Elster appealed to the Trademark Trial and Appeal Board (the Board) arguing that the statutory bars of the Lanham Act restrict his speech contrary to the protections afforded by the First Amendment and that these statutory bars were therefore unconstitutional. Specifically, Sections 2(a) and 2(c) were improper content-based restrictions on free speech because the strict scrutiny standard of “narrowly tailored to serve a compelling government interest” was not met.

The Board agreed with the USPTO that the application for registration should be refused because the requisite consent had not been secured. In doing so, the Board found it unnecessary to address the Examining Attorney’s refusals under Section 2(a). Instead, the Board affirmed the Examining Attorney’s decision under Section 2(c) of the Lanham Act, holding that refusal was proper because the required consent was not obtained. The Board recognized that it did not have the authority to decide the constitutionality of the challenged provision but weighed in on that argument in view of prior Board decisions that examined Section 2(c)’s constitutionality. The Board noted that even if the strict scrutiny test applied, the government had compelling interests to avoid likelihood of consumer confusion and deception as to source and to protect a named person’s rights of publicity and privacy.

The Federal Circuit reversed the Board’s decision and agreed with Elster that 15 U.S.C. § 1052(c) barring registration without consent of the living person named in the subject trademark restricts free speech contrary to the protections of the First Amendment. In a unanimous decision in February 2022, the three-judge panel wrote, “[t]here can be no plausible claim that President Trump enjoys a right of privacy protecting him from criticism.” In re Elster, 26 F.4th 1328, 1335 (Fed. Cir. 2022). The court further noted that the “right of publicity does not support a government restriction on the use of a mark because the mark is critical of a public official without his or her consent.” Id. at 1337.

In doing so, the Federal Circuit treated Section 2(c) as a viewpoint-neutral, content-based restriction on speech in the trademark area and held that, as applied, the statutory provision met neither the strict scrutiny standard of being narrowly tailored to serve a compelling government interest, nor the intermediate scrutiny standard of directly advancing a substantial government interest. The court did not decide which standard was in fact applicable. The Federal Circuit reversed the Board’s decision under both standards.

The Biden Administration appealed the decision to the Supreme Court. The administration argued that “[f]ar from enhancing freedom of speech, the decision below makes it easier for individuals like respondent to invoke enforcement mechanisms to restrict the speech of others.” Brief for Petitioner at 17, Vidal v. Elster, No. 22-704 (U.S. Jan. 27, 2023). Elster disagreed, contending the appealed decision implicated the First Amendment to its fullest extent. He argued that the lower court’s decision was narrow and that “[u]nlike other cases in which the Court has reviewed decisions declaring federal statutes unconstitutional, this case involves a one-off as-applied constitutional challenge—one that turns on the unique circumstances of the government’s refusal to register a trademark that voices political criticism of a former President of the United States.” Brief for Respondent at 2, Vidal v. Elster, No. 22-704 (U.S. April 25, 2023).

During oral arguments, the Justices seemed unconvinced that an individual such as Elster could own a federal trademark registration for the phrase “TRUMP TOO SMALL” for use on t-shirts and hats. There was doubt regarding the free speech argument advanced by Elster, and Chief Justice Roberts told Elster’s attorney that freedom of expression could be harmed by an Elster victory. Roberts said, “Presumably there will be a race to trademark ‘Trump Too This, Trump Too That,’ whatever. And then, particularly in an area of political expression, that really cuts off a lot of expression that other people might regard as an important infringement on their First Amendment rights.” Transcript of Oral Argument at 61, Vidal v. Elster, No. 22-704 (U.S. Nov. 1, 2023). Justice Sonya Sotomayor added, “The question is, is this an infringement on speech? And the answer is no.” Id. at 20. Lastly, Justice Neil Gorsuch said, “At the end of the day, it’s pretty hard to argue that a tradition that’s been around for a long, long time . . . is inconsistent with the First Amendment.” Id. at 57.

Consistent with oral arguments, the Supreme Court ruled in a 9-0 decision that Section 2(c) of the Lanham Act does not violate the First Amendment and the USPTO was right to refuse the application for “TRUMP TOO SMALL.” See Vidal v. Elster, 602 U. S. ____ (2024). In an opinion authored by Justice Thomas, the Court reversed the Federal Circuit decision, noting that Section 2(c) is viewpoint-neutral but content-based because it focuses on whether the applied-for mark contains a person’s name. Slip op. at 2.

Despite being content based, the Court used history and tradition to support its reasoning. The Court said that the provision is consistent with the First Amendment because the Lanham Act—and trademark law as a whole—is designed to distinguish based on a mark’s content and has peacefully coexisted with the First Amendment since the beginning. Id. at 5-7. Justice Thomas elaborated saying “Our courts have long recognized that trademarks containing names may be restricted. And, these name restrictions served established principles.” Id. at 12. Lastly, the Court did not apply its decision to all trademark restrictions that happen to be content-based and viewpoint-neutral and limited its reasoning to Section 2(c) only. Id. at 22.

While the decision was unanimous, the reasoning was not. Justices Kavanaugh, Barrett and Sotomayor each filed separate concurring opinions. Justice Sotomayor had the more critical concurrence in which she questioned the rationale used saying, “This Court has never applied this kind of history-and-tradition test to a free-speech challenge.” Id. at 3 (Sotomayor, J., concurring). Sotomayor notes that the test used in the majority opinion originated from New York State Rifle & Pistol Assn., Inc. v. Bruen, 597 U. S. 1 (2022), and she says that the majority attempts to use this case to show that the history-and-tradition approach is “sensible and workable” in this context. Id. at 4-5. Further, Sotomayor points to lower court decisions that applied Bruen in order to demonstrate “the confusion this Court has caused.” Id. at 5.

Justice Barrett filed a concurrence saying that she would adopt a test that is “grounded in both trademark law and First Amendment precedent, that reflects the relationship between content-based trademark registration restrictions and free speech.” Id. at 1 (Barrett, J., concurring in part).

Lastly, Justice Kavanaugh filed a one-paragraph concurrence that simply states that he agrees Section 2(c) of the Lanham Act is constitutional and that a viewpoint-neutral, content-based trademark restriction could be constitutional even if there is no “historical pedigree.” Id. at 1 (Kavanaugh, J., concurring in part).