![\"\"](\"https:\/\/journals.law.harvard.edu\/jsel\/wp-content\/uploads\/sites\/78\/2024\/02\/history-in-hd-cTz5-T7voqQ-unsplash-2-1024x682.jpg\")
<\/p>\n<\/p>\n
By Alec Winshel\u00a0<\/em><\/p>\n In November 2023, the Supreme Court heard oral arguments in Vidal v. Elster<\/em>. Their coming opinion will be the high court\u2019s latest pronouncement on the relationship between trademark law and the First Amendment\u2019s free speech protections. In my view, the Supreme Court should use Vidal v. Elster <\/em>to clarify that trademarks are speech and that they enjoy the full protections of the First Amendment.<\/p>\n The story of this case begins in 2016. Candidates for the Republican Party\u2019s presidential nomination traded jabs on the debate stage about the relative sizes of their hands<\/a> and the resulting implications about their masculinity. That gave Steve Elster, a lawyer in California<\/a>, an idea. He designed, produced, and sold t-shirts with the phrase \u201cTrump Too Small\u201d emblazoned across the chest. Then, Elster attempted to register the phrase with the U.S. Patent and Trademark Office (\u201cUSPTO\u201d). The USPTO rejected his application. The Trademark Trial and Appeal Board (\u201cTTAB\u201d) affirmed that decision. The TTAB explained that the Lanham Act, which governs trademark law, prohibits registration of \u201cTrump Too Small.\u201d Section 2(c) of Lanham Act requires that the USPTO deny registration for any mark that \u201c[c]onsists of or comprises a name\u2026 identifying a particular living individual except by his written consent<\/a>.\u201d Elster\u2019s mark contains the name \u201cTrump\u201d and, therefore, could not be registered.<\/p>\n Mr. Elster challenged the USPTO\u2019s determination on the basis of his First Amendment right to free speech. The Federal Circuit agreed with him<\/a>. The Court of Appeals reversed the denial of registration for the \u201cTrump Too Small\u201d mark because, in its view, the government did not demonstrate a sufficiently compelling reason to restrict Mr. Elster\u2019s speech.<\/p>\n Judge Timothy B. Dyk, on behalf of the Federal Circuit, wrote that Mr. Elster\u2019s speech \u201cis entitled to First Amendment protections.\u201d Without determining the appropriate standard of review, Judge Dyk wrote that neither of the government\u2019s asserted interests \u2013 President Trump\u2019s right of privacy and his right of publicity \u2013 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 \u2013 a figure of global attention and frequent criticism by political opponents \u2013 had his privacy rights violated by the trademark. Second, the court recognized the government\u2019s interest in \u201cprotecting the right of publicity\u201d; that is, guarding against the misappropriation of recognizable names and images. However, the court rejected the notion that the \u201cTrump Too Small\u201d mark would dilute President Trump\u2019s name or confuse consumers about his endorsement of the product.<\/p>\n The Federal Circuit\u2019s 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\u2019s trademark registration was unconstitutional. In the court\u2019s view, the \u201cTrump Too Small\u201d mark communicated \u201cpolitical criticism\u201d 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.<\/p>\n Yet, the court signaled its willingness to hear broader challenges to Section 2(c)\u2019s prohibition on registering marks with others\u2019 names. The opinion notes \u201cconcerns regarding overbreadth.\u201d 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\u2019s potential applications would be unconstitutional, then a court may choose to deem the law \u201cfacially unconstitutional\u201d and invalidate it entirely.<\/p>\n 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<\/a>. Mr. Elster is free to use the phrase \u201cTrump Too Small\u201d 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.<\/p>\n Mr. Elster\u2019s attorneys argued that trademarks are, in fact, speech. Section 2(c), in their view, is designed to \u201csuppress unwanted speech<\/a>.\u201d They drew comparisons to two recent cases \u2013 Matal v. Tam<\/em><\/a> (2017) and Iancu v. Brunetti<\/em><\/a> (2019) \u2013 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 \u201cdisparage\u201d or contain \u201cscandalous matter.\u201d 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.<\/p>\n The Lanham Act\u2019s restriction on registering others\u2019 names without permission is not clearly a similar viewpoint-based restriction on space. The \u201cTrump Too Small\u201d 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\u2019s relationship with the First Amendment.<\/p>\n