Written By: Colin Hayden
On Wednesday November 1, 2023, the Supreme Court heard oral arguments in Vidal v. Elster. If those names are unfamiliar to you and you are wondering why this case merits an article being written about it, you may know it by its more popular name: The “Trump Too Small” Case. This case presents a First Amendment challenge to §1052(c) of the Lanham Act, the Trademark Act of 1946. Mr. Steve Elster attempted to register the mark “Trump too small” with the United States Patent and Trademark Office (“USPTO”) to be used on t-shirts. The mark allegedly stems from a comment made by Senator Marco Rubio during one of the 2016 presidential debates. The USPTO refused registration citing §1052 (c) which states that “[n]o trademark . . . shall be refused registration on the principal register on account of its nature unless it . . . [c]onsists of or comprises a name, portrait, or signature identifying a particular individual except by his written consent . . .” Mr. Elster did not have former President Trump’s written consent to use his name. Mr. Elster then appealed to the United States Court of Appeals for the Federal Circuit claiming that §1052(c) was unconstitutional under the First Amendment. In February 2022, the Court of Appeals agreed holding that the USPTO’s refusal to register the mark was in error. The USPTO appealed to the Supreme Court and was granted certiorari.
Matal v. Tam and Iancu v. Brunetti
Before we get into the arguments made by each side, there have been two recent Supreme Court decisions which ruled parts of §1052 unconstitutional under the First Amendment. First, in 2017, the Supreme Court ruled on Matal v. Tam. Mr. Simon Shiao Tam applied to the USPTO attempting to register the mark “The Slants” for a musical band. The USPTO denied registration citing §1052(a) which prohibits registration of marks that disparage a person, country, or national origin. In other words, derogatory terms and phrases cannot be trademarked. “The Slants” was derogatory to people who were of Asian or Pacific Islander descent, so it was denied registration. The Supreme Court ruled that this violated the First Amendment because “the disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination.”
Two years later, the Supreme Court held that another part of §1052(a) was unconstitutional under the First Amendment. In 2019, the Court heard Iancu v. Brunetti. In this case, the Court held that §1052(a)’s ban on scandalous or immoral marks violated the First Amendment. The plaintiff in this case, Mr. Erik Brunetti, attempted to register the mark “FUCT” with the USPTO. The Supreme Court held that “the ‘immoral or scandalous’ bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.” These are recent precedents that show that certain parts of the Lanham Act are vulnerable to First Amendment challenges.
Both of these cases successfully challenged different parts of §1052(a), the ban of disparaging marks and the bar to scandalous or immoral marks. This case, however, challenges §1052(c), the provision prohibiting registration of marks that consist of a living person’s name without their consent.
Counsel for the USPTO argued that §1052(c) merely imposes a condition on a federal benefit, not a restriction of speech, that §1052(c) is viewpoint neutral, and that registration would in fact reduce the amount of political speech.
Mr. Elster’s counsel argued that the clause must be subject to First Amendment scrutiny because it deprives a federal benefit based on the applicant’s speech, that §1052(c) achieves a purpose that is unrelated to the general purposes of trademark law, and that §1052(c) leads to viewpoint-based discrimination.
A compelling argument was that Mr. Elster’s speech was not, in fact, being burdened by the lack of registration. As pointed out by Justice Thomas, even without registration, Mr. Elster is still free to sell merchandise with the slogan on it. All he is being denied is a federal trademark infringement claim which, as was argued by the USPTO, could end up reducing political speech.
Based on oral argument, it seems unlikely that the Supreme Court will overturn §1052(c) under the First Amendment. Justice Kagan’s rationale for this decision was the most persuasive to me. She argued that there is a distinction between statutes that reduce speech and statutes that apply conditions to available benefits for speech. This case falls into the latter. Since Mr. Elster’s speech is not being directly limited and denial of registration is not viewpoint based, this case turns on the fact that Mr. Trump did not consent to the mark not whether the mark was critical or complimentary of him. In these circumstances, the government may deny or grant the benefits provided by the statute at its discretion. Because Mr. Elster’s speech was not being restricted and denial of the benefits was not due to the viewpoint of his speech, denying registration of a trademark under §1052(c) does not violate the First Amendment.
This case is also distinguishable from the prior two Lanham Act First Amendment cases. Those two cases dealt with a separate provision of the statute that furthers a different purpose than §1052(c). Deciding what is immoral or scandalous or disparaging is fundamentally viewpoint-based. What is offensive to one person may not be offensive to another. On the other hand, determining whether someone consented to the use of their name in a mark is not viewpoint-based. This provision serves to ensure that consumers are not confused as to the source of the mark. That becomes much more likely when the mark is someone’s name as opposed to whether the mark is offensive. For these reasons, the First Amendment will not end up trumping another part of §1052.
15 U.S.C.A § 1052.
Iancu v. Brunetti, 588 U.S. — (2019).
In Re: Elster, 26 F.4th 1328 (Fed. Cir. 2022).
Ivan Moreno, Justices Take New Look At 1st Amendment In Latest TM Fight LAW360 (Oct. 27, 2023).
Matal v. Tam, 528 U.S. 218 (2017).
Ronald Mann, Must federal government permit “Trump too small” trademark SCOTUSBLOG (Oct. 27, 2023).
Ronald Mann, Court likely to reject “Trump too small” trademark claim SCOTUSBLOG (Nov. 2, 2023).
Transcript of Oral Argument, Vidal v. Elster (22 – 704). Supreme Court. Retrieved at https://www.supremecourt.gov/oral_arguments/argument_transcripts/2023/22-704_2b8e.pdf
Vidal v. Elster, 143 S.Ct. 2579 (Mem) (2023).