This week the Supreme Court issued an opinion in Vidal v. Elster, No. 22-704 (June 13, 2024), a high-profile trademark case, upholding a provision of the Lanham Act against a First Amendment challenge. The provision in question was the “names clause,” which bars registration of a trademark that “[c]onsists of or comprises” a name of a particular living individual, without the consent of that individual, Lanham Act Section 2(c), 15 USC 1052(c).

Political activist Steve Elster sought to register at the USPTO the mark TRUMP TOO SMALL for use on shirts and hats. Not surprisingly, he did so without the consent of President Trump, and was refused registration because of the lack of Trump’s consent. Elster appealed the refusal to register, and the Federal Circuit struck down the refusal on First Amendment grounds in In re Elster, 26 F.4th 1328 (Fed. Cir. 2022).

In doing so the Federal Circuit panel cited two recent Supreme Court cases striking down portions of Section 2(a) on First Amendment grounds, Matal v. Tam, 582 US 218 (2017) (the prohibition against registering marks that disparage persons), and Iancu v. Brunetti, 588 US 388 (2019) (the prohibition against registering marks that include immoral or scandalous matter). Although recognizing that Tam and Brunetti did not involve the same provision, the Federal Circuit panel saw the First Amendment interests in speech involving criticism of government officials as sufficient to override any rights of privacy or publicity of such officials, such that the First Amendment prevented the application of Section 2(c)’s “names clause” to prevent registration of TRUMP TOO SMALL by Elster. (The panel expressly did not decide whether the names clause should be struck down entirely as unconstitutionally overbroad.)

The Supreme Court unanimously disagreed, distinguishing the viewpoint-based discrimination in Tam and Brunetti with the content-based provision of the names clause, which applies regardless of viewpoint, whether the usage is flattering, critical, or neutral.

Although the Court was unanimous in upholding the constitutionality of the names clause, the reasoning for doing so differed among the justices. Justice Thomas’s majority opinion relied heavily on the history of trademark law, and of the ability to use a person’s name as a trademark. A concurring opinion by Justice Barrett would have based the decision on prior caselaw precedents, looking also to the goals of trademark protection. A separate opinion by Justice Sotomayor would have upheld the names clause as “constitutional because it is a viewpoint-neutral, reasonable limitation on a trademark’s registration.”

Aside from the lack of President Trump’s consent, it is an open question, one apparently never raised during the prosecution of the application, whether TRUMP TOO SMALL functioned as a trademark at all. That is, the mark does not seem to provide an indication of the source of the clothing, but rather is a political statement. Indeed, during prosecution at the USPTO Elster himself stated that the mark he sought to register “is political commentary about presidential candidate and president Donald Trump” and “is also political commentary about the smallness of Donald Trump's overall approach to governing as president of the United States and the smallness of his approach to specific issues as president.” As such, the application should probably have been refused on those grounds as well.