Supreme Court Likely to Uphold Bar on Registering “Trump Too Small”

By Jennifer E. Rothman
November 1, 2023

Oral arguments were heard today by the Supreme Court in Vidal v. Elster. This trademark case revolves around the constitutionality of the 15 U.S.C. § 1052(c) bar to registering a mark that "consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent." Based on the oral arguments, the Supreme Court seems likely to reverse the Federal Circuit holding that this bar was unconstitutional.

The Applicant here, Steve Elster, had sought to register "Trump Too Small" for use on t-shirts and other apparel. The application initially had been rejected for violating both this bar and the § 1052(a) bar against "falsely suggesting a connection with a person, living or dead." Upon review by the Trademark Trial and Appeal Board, this rejection of the application was upheld on the basis of the § 1052(c) bar alone. The Federal Circuit than reversed and held that this bar was a content-based speech restriction that was unconstitutional at least when applied, as it was here, to restrict a mark that commented on a public figure, like former President Trump.

The lawyer for the United States, Malcolm Stewart, Deputy Solicitor General, highlighted that bars to registration do not restrict speech. Elster can sell his shirts with the same message on them without a registered mark. He can also obtain a registration for these exact shirts as long as he chooses a source-identifier that does not contain a reference to another person's name without permission. Many of the justices seemed to agree that there was no speech restriction at issue in the case. 

The justices, however, still seemed not to agree on how to categorize the federal trademark registration system. Is it a government benefit?  Is it a limited public forum? Neither?  The Court dodged definitively answering those questions in Tam and Brunetti, prior Supreme Court cases on the trademark registration system, and I expect them to do the same here.

The justices also seemed to disagree on what level of scrutiny might apply, and some thought that discussing the level of scrutiny was not a helpful analytical tool here. For example, Justice Kagan asked the Petitioner whether a reasonableness or rationale basis review was appropriate, and how those standards might differ. Justice Gorsuch suggested that analyzing these labels and tests was besides the point here when limits on using others' names without permission as marks are longstanding. This history is something that I documented in my recent article, Navigating the Identity Thicket, 135 Harv. L. Rev. 1271 (2022).

The justices did not seem concerned that the prohibition exceeded circumstances in which there was confusion over source or sponsorship. As Stewart highlighted in his arguments on behalf of the PTO, there are a number of uses of a person's name that should not be registered without permission even if the use caused no confusion as to sponsorship. He gave several examples, including the use of a mark referring to the L.A. basketball team, the Lakers, as "Jack Nicholson's Favorite Team." This could be accurate but should still not be registered as a mark without Nicholson's consent. He also noted that disclaimers of any connection with the person should not mitigate the bar to registering marks that incorporate another person's name without permission because harms still flow to the person whose name is used without permission.

Regardless of the path to get there, the justices seemed to agree that speech is not restricted by this bar to registration, and the determination of whether the bar applies is not viewpoint-based, in contrast to the circumstances in Tam and Brunetti. None of the justices seemed persuaded by Jonathan Taylor's argument for Elster that the bar was viewpoint-based because individuals are more likely to authorize positive uses of their names than critical ones. The government prohibition does not on its face allow for such discrimination, and Justice Jackson noted several times that there was little to no evidence that the bar was being used in a viewpoint discriminatory fashion by the PTO.

I would place odds on a reversal here and § 1052(c) being held constitutional. 

If the opinion tracks the logic of the justices' questions, there are a few additional things to note revealed by the argument and likely reversal:

First, there appears to be broad support for recognizing personal marks that identify each of us. Justice Alito suggested during the arguments that "everyone has a quasi-property" or trademark right in "his or her name." Several justices noted that such rights were longstanding and in service to trademark's objectives.

Second, the justices continued to suggest support for restrictions on uses of marks even when the uses are not confusing.  This is of particular note for the remand in the recent Jack Daniel's case decided by the Court.  The defendant may seek to challenge the constitutionality of dilution law, which already faces some serious headwinds. Notably, Justice Alito suggested during argument here that the San Francisco Arts & Athletics case would support a finding of constitutionality here--a case notably that turned on barring use of a mark ("Olympics") without a showing of likely confusion or dilution. This analytical approach also suggests that the Court will accept the constitutionality of right of publicity laws without regard to confusion, even beyond the performance context of Zacchini.

Finally, several justices agreed with the government about the importance of being able to make statements like "Trump Too Small" and to sell t-shirts with such messages on them. The justices suggested that this was speech protected by the First Amendment. In fact, they expressed concern that allowing Elster to register the slogan as a mark would block others from having equal access to making such comments about Trump. This suggests a recognition of the importance for First Amendment purposes in being able to comment on and refer to real people, even if some money is made in the process.  This line of analysis also highlights why most slogans or sayings like this don't and should not be understood to function as marks or source-identifiers.