By Alec Winshel
In November 2023, the Supreme Court heard oral arguments in Vidal v. Elster. Their coming opinion will be the high court’s latest pronouncement on the relationship between trademark law and the First Amendment’s free speech protections. In my view, the Supreme Court should use Vidal v. Elster to clarify that trademarks are speech and that they enjoy the full protections of the First Amendment.
The story of this case begins in 2016. Candidates for the Republican Party’s presidential nomination traded jabs on the debate stage about the relative sizes of their hands and the resulting implications about their masculinity. That gave Steve Elster, a lawyer in California, an idea. He designed, produced, and sold t-shirts with the phrase “Trump Too Small” emblazoned across the chest. Then, Elster attempted to register the phrase with the U.S. Patent and Trademark Office (“USPTO”). The USPTO rejected his application. The Trademark Trial and Appeal Board (“TTAB”) affirmed that decision. The TTAB explained that the Lanham Act, which governs trademark law, prohibits registration of “Trump Too Small.” Section 2(c) of Lanham Act requires that the USPTO deny registration for any mark that “[c]onsists of or comprises a name… identifying a particular living individual except by his written consent.” Elster’s mark contains the name “Trump” and, therefore, could not be registered.
Mr. Elster challenged the USPTO’s determination on the basis of his First Amendment right to free speech. The Federal Circuit agreed with him. The Court of Appeals reversed the denial of registration for the “Trump Too Small” mark because, in its view, the government did not demonstrate a sufficiently compelling reason to restrict Mr. Elster’s speech.
Judge Timothy B. Dyk, on behalf of the Federal Circuit, wrote that Mr. Elster’s speech “is entitled to First Amendment protections.” Without determining the appropriate standard of review, Judge Dyk wrote that neither of the government’s asserted interests – President Trump’s right of privacy and his right of publicity – are substantial enough to meet even the lowest standard of review that the court might apply. First, the court dismissed the argument that President Trump – a figure of global attention and frequent criticism by political opponents – had his privacy rights violated by the trademark. Second, the court recognized the government’s interest in “protecting the right of publicity”; that is, guarding against the misappropriation of recognizable names and images. However, the court rejected the notion that the “Trump Too Small” mark would dilute President Trump’s name or confuse consumers about his endorsement of the product.
The Federal Circuit’s decision was narrow. It did not hold that Section 2(c) of the Lanham Act is unconstitutional and, thus, invalid. It held only that application of the law to deny Mr. Elster’s trademark registration was unconstitutional. In the court’s view, the “Trump Too Small” mark communicated “political criticism” about a public figure. The virtues of allowing open discussion about presidential candidates are especially compelling, and the Trump name implicates relatively weak concerns about privacy.
Yet, the court signaled its willingness to hear broader challenges to Section 2(c)’s prohibition on registering marks with others’ names. The opinion notes “concerns regarding overbreadth.” In other words, Section 2(c) may result in an inordinate number of unconstitutional applications, such as trademarks that parody famous figures or contribute to public debate on important issues. If an outsized number of a law’s potential applications would be unconstitutional, then a court may choose to deem the law “facially unconstitutional” and invalidate it entirely.
Petitioners, on behalf of the United States government, argued that Section 2(c) is consistent with the First Amendment. They suggest that denial of trademark registration is not a restriction on speech. Mr. Elster is free to use the phrase “Trump Too Small” as he wishes, including as an identifier for his products. Denial of his application for registration is merely a choice by the federal government to avoid subsidizing this particular speech by granting the registrant additional commercial benefits. Mr. Elster is entitled to speak as he wishes. He is not entitled to receive special benefits from the U.S. government for that speech.
Mr. Elster’s attorneys argued that trademarks are, in fact, speech. Section 2(c), in their view, is designed to “suppress unwanted speech.” They drew comparisons to two recent cases – Matal v. Tam (2017) and Iancu v. Brunetti (2019) – where the Supreme Court invalidated other portions of the Lanham Act for violating the First Amendment. Those cases were easier. The now-defunct provisions of the Lanham Act had prohibited registration of trademarks that “disparage” or contain “scandalous matter.” Those restrictions disfavor certain trademarks because of the viewpoint that they express. Viewpoint discrimination is the gravest offense for any government restriction on speech. In both cases, every Justice agreed that the provisions were unconstitutional.
The Lanham Act’s restriction on registering others’ names without permission is not clearly a similar viewpoint-based restriction on space. The “Trump Too Small” mark expresses a critical view of the former president, but Section 2(c) is broad. It encompasses registration of marks that support, vilify, or express no opinion whatsoever about the named person. That makes this a tricky case for the Supreme Court, and one that might force its Justices to clarify their view on trademark’s relationship with the First Amendment.
The Court should use this case to declare that trademarks are a form of speech that receives fulsome First Amendment protections. The majority opinions in Matal and Brunetti stopped just short of making this proclamation. Vidal v. Elster can provide a decisive answer. Trademarks serve many of the same functions as non-commercial speech: communicating political messages, expressing opinion, and sharing ideas. Courts have an existing framework for government regulation of commercial speech. That framework should be applied here to Mr. Elster’s trademark and, moving forward, to all other applications for trademark registration.
If the Court analyzes this case using a robust First Amendment framework, the likely result is that Mr. Elster’s trademark will be successfully registered. But, it’s not clear that the Court could muster enough votes to invalidate Section 2(c) of the Lanham Act entirely. Here, Mr. Trump’s claims to privacy are especially weak. It’s challenging to imagine that anyone donning a “Trump Too Small” shirt would mistakenly believe that it was created by the former president. In other cases, there’s a much stronger claim that a trademark with another person’s name would confuse the market and invade the subject’s privacy in such a manner that Section 2(c) would pass constitutional muster. That case will reach courts eventually. When it does, courts should analyze the issue under a robust, constitutionally-sound First Amendment framework that the Supreme Court first announces in Vidal v. Elster.
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