Justices Will Probe Trademarks’ Nature in ‘Trump Too Small’ Case

The propriety of blocking registration of a “Trump Too Small” trademark offers the US Supreme Court a narrow question that parties will argue Wednesday calls for a broad answer.

The US government says a ban on registering trademarks that identify a living individual without their consent poses no free speech threat—nor does regulating trademarks in general. But attorney Steve Elster said the ban violates free speech by functionally favoring praise of public officials over criticism. The Federal Circuit ruled in Elster’s favor on the registration of “Trump Too Small” for t-shirts, but declined to take on the broader question of the law’s constitutionality.

The justices will have to at least explore the nature of how free speech applies to trademarks Wednesday when they question the parties during oral arguments.

And they may want to rule more broadly on First Amendment implications to avoid continuing the stream of recent Lanham Act constitutional challenges, trademark law professor Mark McKenna of UCLA said.

“I think it would have been better if they had done that form the beginning, but they didn’t. So now we’re scrambling,” McKenna said. “This is a mess. They should have never gotten into this game. Now they’re in it and now they’re going to have to do something.”

The fight over ‘Trump Too Small’ is the latest in a series of cases the court has faced in recent years raising First Amendment questions over trademark registrations. Although the justices skipped deciding the broader constitutional questions when they struck down different statutory registration bans in 2017 and 2019, this time the nature of the government’s argument may force the justices to now draw a line in the sand, he said.

The government said the US Court of Appeals for the Federal Circuit erred by finding trademark registration should be evaluated under at least intermediate if not strict scrutiny. Both provide relatively high bars for weighing First Amendment concerns against government interests.

Elster, meanwhile, argued the Federal Circuit was correct on heightened scrutiny but that it doesn’t matter because the ban fails any standard. The high court agreeing with Elster would allow it to decide the case narrowly and again leave the broader scrutiny question alone.

Trademark attorney Aaron D. Johnson of Lewis Roca Rothgerber Christie LLP said he expects a narrow ruling that again ducks the scrutiny question as the most likely outcome.

“I don’t think the court has to say it’s one or the other. I would expect it will not make that decision, as well,” Johnson said. “There are ways to get to a decision without saying trademark law has to be one or the other.”

Fundamentals

The high court in 2017 issued Matal v. Tam, finding a ban on “disparaging” trademarks unconstitutional, and in 2019 it found the same reasoning applied to “scandalous” and “immoral” marks in Iancu v. Brunetti. Elster applied to register “Trump Too Small” to cover shirts in between those rulings in 2018.

A trademark examiner replied the month after the application was filed that the mark required Trump’s consent under Lanham Act Section 2(c)—the ban on individual-referencing marks without consent. The US Patent and Trademark Office later also refused registration on the grounds that it falsely suggested an association with Trump, which is prohibited in Section 2(a).

The government argued Section 2(c) differs fundamentally from stricken bans on disparaging and vulgar marks used to block registration of “Slants” as a band name and “FUCT” as a clothing line. Those represented content-based discrimination, while Section 2(c) is content-neutral, the government said.

Elster said Section 2(c) is content-based on its face and viewpoint-based in practice. Because Section 2(a) bars falsely suggesting the individual is associated with the product, flattering uses wouldn’t likely spur objection. That means Section 2(c)'s only effective purpose is thwarting nonconfusing critical marks, he said.

The history of the “names clause,” he said, drives home the point. In 1909, the patent office barred use of presidents’ names because it “tends to distract from the dignity” of the office. US Rep. Edward Rogers expanded on that when crafting the 1939 Lanham Act by adding a ban on referencing any individuals without consent. Rogers, who also introduced the disparagement clause, said “the idea of prostituting great names” was “very distasteful,” as quoted in Elster’s brief.

Scrutinizing Scrutiny

Elster’s response criticized the government’s brief for mostly focusing on the level of scrutiny applied by the Federal Circuit. He argued the government was wrong on both what free speech standard applied to trademark registration limits, and whether it mattered.

The government argued heightened scrutiny wasn’t required since anyone can still use unregistered terms or designs, even as trademarks under some circumstances. Registrations are merely “government conferred benefits” requiring a “reasonableness” standard, and declining to reward exploitation of an individual’s name was reasonable, it said.

Johnson said the justices may find the standard should hinge on the specific registration restriction, with viewpoint-based restrictions—but not neutral ones—subject to heightened scrutiny. Whether they find the names clause neutral or not, he said the court likely won’t take a position on whether registrations are “government benefits.”

“The court didn’t seem to give it much weight” in Tam and Brunetti, even if the justices passed on deciding the question, Johnson said.

Elster argued a restriction didn’t have to ban speech to require heightened scrutiny, but merely has to burden it based on content. Denying the benefits of trademark registration based on content clearly burdens speech between companies and their customers, he said.

He also said the names clause failed a reasonableness standard anyway because the government failed to point to any real-world harm. Any harm from commercial use that would confuse consumers is already mitigated by Section 2(a)'s ban on false associations, he argued.

But the government said not all cases are clear cut and the two parts complement each other to mitigate confusion. The names clause provides a “bright-line rule” letting individuals decide how their name is used commercially, reducing risk beyond what Section 2(a) alone can, it said.

McKenna said regarding registration as a government benefit is “the right way” to think of the issue. But he also agreed the false association prong means the names clause could be viewed as only addressing non-confusing uses, which doesn’t fit the purpose of trademark law.

“It’s a very unfortunate error in the way the court approached things in Tam and Brunetti,” McKenna said.

Gupta Wessler PLLC represents Elster. The US Solicitor General’s Office represents the USPTO.

Vidal v. Elster, U.S. No. 22-704, 11/1/23