Can you diss someone by name in a trademark application? Nope. See Vidal v Elster (aka the “TRUMP TOO SMALL” case). See also, the “names clause” in trademark law, which is prohibition on the registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent,” 15 U. S. C. §1052(c).

Why did we get this result? Depends on who in SCOTUS you ask (turns out, constitutional law is hard stuff). For whatever it’s worth, even though Thomas’s reasoning can be summarized as, “BcuZ HistOree sAyS so,” he got to the correct result. It’s as if he copied someone else’s answers in class, but couldn’t show his work. I digress. I just hope lower courts don’t follow his reasoning.

The concurrence from Kagan, Sotomator, and Jackson, in my view, had the cleanest, simplest 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.

So, poor Mr. Elster can still troll Mr. Trump on a shirt. You just won’t see a (R) next to his mark any time soon.