The “Trump Too Small” trademark dispute centers on Steve Elster’s effort to register a politically charged phrase referring to former President Donald Trump for use on merchandise such as T-shirts. The US Patent and Trademark Office (USPTO) initially rejected Elster’s application, citing the Lanham Act’s Section 1052 (2)(c), which prevents trademarks from identifying living individuals without their consent. This battle brings into focus the delicate balance between trademark law and First Amendment rights, particularly when it comes to political commentary. In this piece, TBillick Law explores the intersection of the First Amendment and trademark rights in Vidal v. Elster and the conflict over “Trump Too Small.”
Background
The Lanham Act, enacted in 1946, governs trademarks, service marks, and unfair competition. Section 1052 (2)(c) of the Act specifically prohibits the registration of a trademark that identifies a particular living individual without their written consent. This provision aims to protect individual privacy and prevent the commercial exploitation of their names without permission.
Labor lawyer Steve Elster intended to use the phrase “Trump Too Small” on merchandise, including T-shirts, as a form of political commentary and filed for trademark protection with the US Patent and Trademark Office (USPTO), which the USPTO rejected. It based its rejection on Section 1052 (2)(c) of the Lanham Act, as the phrase clearly identifies former President Donald Trump and was submitted without his consent. According to the USPTO, allowing such a trademark would violate the legal protection intended by the Lanham Act.
Elster argued that the phrase was a critique of Trump, particularly in a political context, and thus should be protected under the First Amendment. This clash between trademark law and free speech principles set the stage for a complex legal battle.
Legal Proceedings
Elster challenged the USPTO’s decision in federal court, arguing it infringed on his First Amendment rights, as the phrase was political commentary. The Federal Circuit Court reversed the USPTO’s decision, supporting Elster’s claim that political speech is highly protected. They reasoned that the government’s interest in protecting individual privacy was not strong enough to outweigh Elster’s free speech rights, and although the restriction was content-based, it was viewpoint-neutral. The Federal Circuit emphasized the protection of political speech, but the US Supreme Court had a different interpretation.
The Supreme Court Reverses Course
The US Supreme Court heard the case in June 2023. Elster maintained that the phrase “Trump Too Small” was a form of political commentary and, therefore, should be protected under the First Amendment. Elster’s legal team highlighted the importance of protecting political speech, especially when it involves public figures, as a cornerstone of free expression.
In contrast, the government defended the Lanham Act’s provisions, emphasizing the need to protect individual privacy and prevent unauthorized commercial use of personal names. The government’s defense was built on:
- Protecting the privacy and personal rights of living individuals from unauthorized commercial exploitation;
- Preventing potential confusion or false associations that might arise from the use of a person’s name in trademarks; and
- Upholding the long-standing legal tradition of restricting certain content in trademarks to balance commercial interests and individual rights.
The government contended that the restriction was viewpoint-neutral and necessary to prevent the exploitation of an individual’s name without their consent.
Ultimately, the Supreme Court’s involvement underscores the complexity of balancing free speech with trademark protections. The arguments from both Elster and the government highlighted the delicate nature of this legal issue, setting the stage for a decision that would influence future trademark applications involving public figures and political commentary.
The Ruling
The Supreme Court ultimately upheld the Lanham Act’s Section 2(c), affirming the USPTO’s initial rejection of the “Trump Too Small” trademark application. Why? Depends on which Justice you ask.
Justice Thomas reverted back to his typical “history and tradition” line of thinking. He maintained that the United States has a “history and tradition” of content-based trademark restrictions, a discussion that generally showed a long tradition of preventing any individual from using a trademark to prevent others from using their own names to identify goods in commerce. For Thomas, that discussion was enough to establish that the “names clause has deep roots in our legal tradition.”
The concurrence from Kagan, Sotomator, and Jackson, however, took a different line of reasoning:
“This case involves a free-speech challenge to a viewpoint-neutral, content-based condition on trademark registration. In deciding how to evaluate this kind of challenge, the Court faces two options: Either look only to the history and tradition of the condition, or look to trademark law and settled First Amendment precedent. The first option, which asks whether the history of a particular trademark registration bar plays well with the First Amendment, leads this Court into uncharted territory that neither party requests. The other guides it through well-trodden terrain. I would follow the well-trodden path.”
Writing the concurrence, Sotomayor found the names clause permissible because it simply conditions a government *benefit* (trademark registration) on the content of the speech. Under well-established 1st Amendment jurisprudence, the government has more leeway to restrict speech when it confers an additional benefit – as opposed to a RIGHT. Moreover, under well-established 1st Amendment precedent, “commercial speech” does not get the same level of protections as other kinds of speech (translation: you have to follow more rules when you sell stuff … see Lanham Act 43(a) restrictions on false and misleading advertising).
Sotomayor explained that registration “only confers additional benefits on trademark holders,” and that refusal to register does nothing to prevent Elster from speaking or selling objects including the mark. Accordingly, she found the provision well within First Amendment law.
The justices did generally agree that while the restriction was indeed content-based, it was also viewpoint-neutral and served a significant governmental interest. The Court’s decision underscored the principle that certain content restrictions in trademark law are permissible when they protect individual privacy and prevent unauthorized commercial use of personal names. The justices noted that this restriction fits within a long tradition of similar legal constraints aimed at balancing the rights of individuals with the needs of commerce. The historical context provided by the Court highlighted that the Lanham Act’s provisions are designed to prevent potential harm that could arise from the exploitation of living individuals’ names without their consent.
By upholding the Lanham Act’s provision, the Supreme Court reinforced the notion that while free speech is a fundamental right, it is not absolute, especially when it comes to commercial speech and trademarks. This ruling indicates that trademarks involving the names of living individuals will continue to face strict scrutiny, ensuring that personal rights are adequately protected while maintaining the integrity of trademark law.
Implications for Intellectual Property Law
The Supreme Court’s decision to uphold the Lanham Act’s names clause affects the balance between trademark rights and First Amendment protections. The Court unanimously rejected Elster’s attempt to force the US Patent and Trademark Office (USPTO) to accept the registration of “Trump Too Small” for T-shirts mocking the former president. While all nine justices agreed that the First Amendment permits the USPTO to refuse to register the mark, as noted above, they splintered sharply on their reasoning.
As such, the ruling is narrow. The Court stated that “we do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional.” This case underscores the persistent conflict between trademark rights and First Amendment protections, particularly when it involves politically sensitive content. The ruling indicates that although people can freely use such phrases in their speech, securing a trademark—which provides specific legal advantages and protections—necessitates adhering to more intricate legal criteria.
So, Mr. Elster can still troll Mr. Trump on a shirt. You just won’t see a (R) next to his mark any time soon.
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