Supreme Court Says First Amendment Can't Save 'Trump Too Small' Trademark Bid

Greenberg Glusker Fields Claman & Machtinger


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Yesterday the Supreme Court issued an opinion in Vidal v. Elster, 602 U. S. ____ (2024), a case involving a plaintiff's attempt to register the trademark "Trump too small" (a reference to a key political issue.
United States Intellectual Property
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Yesterday the Supreme Court issued an opinion in Vidal v. Elster, 602 U. S. ____ (2024), a case involving a plaintiff's attempt to register the trademark "Trump too small" (a reference to a key political issue in the 2016 Republican primary—the size of the former President's hands). The mark was rejected by the USPTO under the "names clause" of the Lanham Act, which prohibits registration of marks containing the name of a living person without that person's consent. The applicant, Steve Elster, contended that the USPTO violated his First Amendment rights by refusing registration of his mark, which he said was expressive, political speech.

In a 9-0 decision, the Court found that the application of the names clause did not violate the First Amendment. The Court acknowledged that the names clause is a "content-based" restriction, insofar as it hinges on what the content of the mark is. But the Court declined to apply strict scrutiny or treat the clause as presumptively unconstitutional—the typical approach it would take to a content-based restriction. Justice Thomas, delivering the opinion of the Court, concluded that trademark law has always been inherently "content-based," but has nonetheless coexisted happily with the First Amendment. If someone is using speech to identify the source of goods or services—which is what a trademark boils down to—then the First Amendment does not have much to say.

In this respect, the Court expanded on the recent decision of Jack Daniel's Properties, Inc. v. VIP Products LLC, which also dealt with the interplay of the First Amendment and trademark law. Jack Daniel's involved the alleged use of a trademark in an expressive work (well, in an expressive, parody dog chew toy). There, the Court considered whether the First Amendment would immunize the allegedly infringing use by virtue of the fact that the use was in an expressive context and was not explicitly misleading consumers. The Court declined to apply that threshold First Amendment test (the Rogers v. Grimaldi doctrine) because the alleged infringer was using the mark at issue as a "source identifier," i.e., to identify the source of their goods or services.

While Jack Daniel's and Vidal involve very different contexts, the trend exhibited by the Court—and particularly by the ultra-conservative wing—is skepticism that the First Amendment comes into play when dealing with trademark law's core domain: source identification. If someone is using a mark to identify the source of goods or services, then even if that use has some expressive content, the Court seems disinclined to make special, free-speech-based exceptions from cookie cutter trademark rules.

The Vidal decision, like the Jack Daniel's decision, is a "narrow" one, according to the Court—famous last words, but possibly true in this case. What may end up being most relevant is the Court's continued emphasis on the concept of "source identification." And while "source identification" has gone somewhat undefined, the Vidal decision provides some helpful guideposts, echoing what was said in Jack Daniel's. First, the act of seeking to register the mark at issue is prima facie evidence of a source identifying function. Second, as stated in Justice Barrett's concurrence (joined by Justices Sotomayor, Kagan, and Jackson): "[M]arks that simply describe the kind and quality of the good do not necessarily identify its source."

But if you are using another person's mark as a source identifier, not in a descriptive or otherwise non-trademark sense, you shouldn't count on the First Amendment to bail you out. And you may need to find another brand name if you want to poke fun at the former President.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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