Narrow ‘Trump Too Small’ Edict May Yet Stem Trademark Ban Blitz

The US Supreme Court’s “Trump Too Small” decision might tap the brakes on a stream of First Amendment challenges to trademark restrictions, despite it being explicitly written as a narrow ruling.

The high court unanimously held the Lanham Act’s names clause—which bars registering marks using names of living people without their consent—was constitutional in the June 13 decision. That doomed attorney Steve Elster’s bid to register the reference to a 2016 debate dig about the former president’s hands.

Justice Clarence Thomas’ majority opinion said “the history and tradition” of restricting name-based trademarks validated the provision. It also declined, however, to “opine on what may be required or significant” in cases involving other content-based trademark restrictions.

The opinion—the third from the high court in a First Amendment challenge to a trademark registration restriction since 2017—could stem the tide of those attacks despite its narrowness, attorneys say. After axing bans on disparaging and vulgar trademarks in prior cases, the justices in Elster v. Vidal established viewpoint-neutral restrictions would be treated differently, whatever the standard.

The court emphasized trademark law’s deep rooting in the legal tradition, providing a clear signal to future litigants, IP attorney Robert N. Hunziker of Covington Burling LLP said.

“They wanted to make it clear that trademark law at it’s most essential is constitutional. It’s been around longer than the country, and people should not bother challenging that,” Hunziker said. “There’s a possibility that if they’d decided this a different way, they could have been teeing up more and more challenges.”

Still, Thomas’ opinion did little to clarify the interplay between trademark registrations and the First Amendment. It skirted questions about the level of scrutiny to apply to trademark restrictions and whether marks are analogous to government benefits, a limited public forum, or something else.

“They side-stepped a lot of really meaty legal discussion,” intellectual property law attorney Fara Sunderji of Dorsey & Whitney said, calling it “sort of a shame they didn’t discuss” the broader issues.

“Why did we take this case then?” she asked. “Why did we spend all this time and energy to tell one guy from California he can’t have a trademark?”

What’s ‘Vulnerable’

The Supreme Court struck down a provision barring “disparaging” trademarks in its 2017 decision in Matal v. Tam, a case about an Asian American band called “The Slants.” Then in 2019 it struck a ban on “scandalous” and “immoral” marks in Iancu v. Brunetti, allowing registration of “FUCT” as a clothing brand mark.

The Federal Circuit applied those cases to find Elster’s free speech had been infringed when the US Patent and Trademark Office rejected his application to register “Trump Too Small” to cover shirts. That led to concerns among practitioners that numerous other Lanham Act restrictions could be vulnerable.

But the names clause restriction differs from the “disparaging” and “scandalous” bars, the justices found, because it’s “viewpoint neutral,” as the context and meaning of the words don’t affect the rule’s application.

Hunziker said that suggests bans such as those on marks using national, state, city, and foreign flags and coats of arms, for example, should be safe. Like the names clause, they were rooted in trademark law’s core function of preventing consumer confusion in ways that the other bans weren’t.

He and other attorneys noted a major exception: dilution by tarnishment. The Lanham Act bars marks that create an association likely to harm a famous mark’s reputation, even without consumer confusion. The government subjectively deciding what links might harm a reputation “remains pretty vulnerable” to a court challenge, Hunziker said.

Tarnishment doesn’t often arise as a focus in the registration context, though. Most registrations flagged by the US Patent and Trademark Office as diluting a brand are also deemed likely confuse consumers—striking at trademark law’s core function.

The case could come before the court in an infringement context, though. The district judge in a Jack Daniel’s trademark case over a whiskey bottle-shaped dog toy—already ruled on by the high court on another issue—in April asked the US solicitor general for an opinion on whether banning dilution by tarnishment is constitutional.

The government responded that it is, arguing the focus being on the mark’s effect—likely harm to the famous mark’s reputation—rather than on the mark itself makes the ban viewpoint-neutral. Defendant VIP Products LLC, however, called it “viewpoint discrimination in its rawest form.” It noted Jack Daniel’s argued a “poop joke is tarnishing per se” for food or drink products, yet is also viewpoint-neutral.

No Scrutiny

The court left broader questions about the First Amendment and trademark law unanswered as justices split over the basis for their unanimous judgment. The lack of guidance was exemplified in a concurrence by Justice Brett Kavanaugh, joined by Chief Justice John Roberts, which adopted Thomas’ historical justification while suggesting it might not be necessary in other cases.

Four justices joined concurrences saying trademark law’s purpose and free speech precedents justify the names clause, which doesn’t require heightened scrutiny because of its viewpoint-neutrality.

Justice Amy Coney Barrett’s said Thomas “never explains why hunting for historical forebears” is “the right way to analyze the constitutional question.”

IP attorney Eleanor M. Lackman of Mitchell Silberberg & Knupp LLP agreed, calling the judgment correct but Thomas’ historical justification “the wrong way to go.”

“It is a little strange that the court kind of punted on the standard of analysis and what level of scrutiny applies,” she said.

Thomas rejected Barrett’s claim that a trademark is loosely analogous to a limited public forum, finding “little explanation for why that approach makes sense.” He also rejected Justice Sonia Sotomayor’s pulling, as she put it, “the various ‘strands of precedent’ together” to conclude trademarks are a government benefit, calling it an “ill fit” for a concept that usually involves disbursing money.

IP attorney Aaron Johnson of Lewis Roca Rothgerber Christie LLP said the reasoning in the Barrett and Sotomayor concurrences—that viewpoint-neutral trademark bars need only a rational basis—may prevail in future similar challenges, though in the minority this time.

“The justices seem pretty open to it, as long as it’s not viewpoint-based,” Johnson said. “It seems likely they’d be able to find a fifth justice for any other challenges to come along.”

‘Slippery and Slope-y’

The nature of trademark registration complicates First Amendment questions. Elster claimed the refusal to register his mark infringed his free speech. But the US government and several friend-of-the-court briefs flipped that argument around, noting that denying him registration doesn’t stop him from using “Trump Too Small” as a mark—it only stops him from blocking others from doing so.

The justices’ rationales for upholding the names clause track closely with the right of publicity, a state-law right that gives individuals control over commercial uses of their identity. The justices didn’t explicitly mention the concept, but Thomas noted that historically a person has “ownership over his own name.”

Elster argued the Lanham Act bar against falsely suggesting an association with a person would address publicity rights concerns. He also said no one would presume Trump was associated with such an unflattering mark, so the names clause only attacks critical marks as Trump would presumably allow positive ones.

IP attorney Dyan Finguerra-Ducharme of Pryor Cashman LLP, though, called that suggestion “baloney,” as famous people want commercial control over their identity regardless. She said she wished the court had delved into the concept of publicity rights and false association.

But ultimately the justices seemed to want to “make this a super narrow decision” to avoid inadvertent spillover—potentially going beyond trademark law, Johnson said.

“They didn’t want this decision affecting other First Amendment decisions,” he said.

The result may just indicate the justices didn’t think the core question was as important as the appellate ruling on it, both Lackman and Sunderji said. Allowing a decision striking down a content-based, viewpoint-neutral trademark bar to stand could put more restrictions—even ones key to the trademark system—on thin ice, they said.

“I think they took it because the Federal Circuit, in my opinion, got it wrong,” Lackman said. The appellate court’s decision “was as slippery and slope-y as it could possibly be.”

The case is Vidal v. Elster, U.S., No. 22-704, opinion filed 6/13/24.