Justices Have Multiple Paths To Doom ‘Trump Too Small’ Trademark

US Supreme Court justices this week made it clear they’re likely to reverse an appeals court’s ruling allowing a “Trump Too Small” trademark to be registered, leaving only the question of how, attorneys said.

The justices’s questioning at oral argument Nov. 1 indicated a near-consensus that the US Patent and Trademark Office’s application of a statutory ban on registrations referencing living individuals without consent doesn’t run afoul of the First Amendment, attorneys broadly agreed. Applicant Steve Elster had convinced an appeals court last year that the government action impinged his speech.

The high court’s apparent lean toward upholding the ban represents a departure from its posture in decisions from 2017 and 2019, when it struck different registration bans as viewpoint discriminatory. And it raises the questions of what legal pathway they’ll take to get there and how broadly they’ll rule.

At its narrowest, the forthcoming ruling would decide merely if and when it’s possible to include a known name in a registered trademark without permission. But a broadly written opinion could implicate how free speech applies to trademark registrations or even First Amendment law in general.

Attorneys routinely warn against presuming too much about the court’s opinion based on oral argument. But trademark attorneys including Mike Nepple of Thompson Coburn LLP said the tea leaves here were easier to read than in most cases.

“After hearing the oral argument, I think it’s a pretty safe assumption that the court is going to rule on behalf of the government,” Nepple said. “The interesting points in the opinion are going to be how narrow or broad it is, and what standard applies.”

The justices would presumably have to find the Lanham Act provision constitutional under at least some circumstances. But they could either answer or duck underlying questions about the nature of trademark registration, its interplay with free speech, and the First Amendment more broadly.

Legal professionals say they’d like some broader answers to questions avoided by the court in Matal v. Tam in 2017 and Iancu v. Brunetti in 2019. But they generally expect the court to instead keep the ruling narrow, at least enough to avoid “a rule that might have ripple effects outside of intellectual property law,” as Justice Neil Gorsuch put it during the argument.

Viewpoint Discrimination

The high court in Tam found a ban on “disparaging” trademarks unconstitutional. In 2019 it followed the same reasoning to overturn a ban on “scandalous” and “immoral” marks in Brunetti. Elster applied to register “Trump Too Small” to cover shirts in between those rulings in 2018.

A trademark examiner said the mark required Trump’s consent under the ban in Section 2(c), and later added that it falsely suggested an association with Trump, a separate basis for refusal.

Elster argued Section 2(c) is viewpoint-based—at least in practice—because its only effective function not overlapping the false endorsement ban is thwarting negative, non-confusing references. The US Court of Appeals for the Federal Circuit agreed, but the high court seemed skeptical Wednesday.

“They were giving Elster’s counsel a much tougher time,” trademark law professor Alexandra J. Roberts of Northeastern University said. “It made a lot of us say ‘maybe we’re seeing some limits on this kind of spree of taking down the Lanham Act one piece at a time.’”

The question will be what kind of limits.

The government argued Section 2(c) is content-neutral, unlike the stricken bans requiring subjective judgments. Questions for deputy solicitor general Malcolm L. Stewart seemed to seek the best way to agree without creating collateral damage.

The very first question in the arguments—from Justice Clarence Thomas—asked how a government win would affect copyright. Nepple said he thinks the justices “don’t want to open a can of worms” with unintended First Amendment consequences.

“I think the opinion will be very narrow, very tight, and very short,” Nepple said.

Scrutiny

The dispute centers on the basics of how to characterize trademark registration for the purposes of First Amendment analysis, and what standard—reasonableness or some heightened scrutiny—should apply.

In Tam and Brunetti, the court couldn’t find a majority answer to those questions. Roberts noted the similarities to 2017 and 2019, when majorities agreed only that the provisions in those cases were unconstitutional by any standard.

The government says registration is a government benefit, subjecting it to a mere “reasonableness” standard. But Justice Samuel Alito said the extent of the government’s ability to attach conditions to a benefit “is a very difficult area of constitutional law, and potentially a quite dangerous one.”

Trademark attorney Ian Block of Neal, Gerber & Eisenberg LLP said the right of publicity principles invoked by the provision “dovetail nicely” with the statute’s overall purpose of ensuring consumers aren’t deceived as to who is supplying products and services. Even positive uses of clients’ names without consent are often unwanted, he said.

Section 2(c) can also more quickly scuttle misleading marks than assessing them for possible false suggestion of association, especially in the case of intent-to-use applications where the mark hasn’t yet been used.

Aside from the government benefit argument, Justice Brett Kavanaugh noted some justices had suggested registration may be analogous to a “limited public forum"—a doctrine allowing the government to limit access to an otherwise public forum to certain types of speech.

“There’s a whole body of case law about that,” trademark attorney Fara Sunderji of Dorsey & Whitney LLP said. “That is very hardcore First Amendment law. They could go down a very deep First Amendment hole.”

‘First Principles’

But Justice Sonia Sotomayor said the court doesn’t have to go down that hole. She said “it’s almost as if we’re becoming straightjacketed by labels” rather than viewing it from “first principles": whether refusal is “an infringement on speech.”

“And the answer is no,” she said, noting Elster can sell as many shirts as he wants using the phrase, with or without a registration.

Attorneys also noted Chief Justice John Roberts’ direct attack on Elster’s position. He asked Elster attorney Jonathan Ellis Taylor of Gupta Wesssler PLLC to respond to the argument that his client is “the one who is undermining First Amendment values,” as trademark rights allow one to stop others from using marks in certain ways.

Roberts said there could be “all sorts of litigation” if others used the mark as Elster wanted to: expressively.

“Roberts exposed the contradiction in the applicant’s argument,” Sunderji said. “If your argument is using it on a t-shirt is both trademark use and political free speech use, and you now have a right to exclude people from doing that—you can’t have it both ways.”

Block predicted the justices will look to dodge the scrutiny standard question. He said the result would likely mirror Tam and Brunetti: each generated several opinions differing on fundamental underlying questions—leading to the narrow majority agreements.

“It might be difficult to collect a majority of justices who have the same opinion on” how to apply the First Amendment to trademark registrations, Block said. “To get a majority you’ll probably need something narrower.”

The case is Vidal v. Elster, U.S., No. 22-704.