Trademark Registration of TRUMP TOO SMALL is Not Protected by First Amendment, Supreme Court Holds

The U.S. Supreme Court upheld the prohibition on registration of personal names, and the consequent refusal to register TRUMP TOO SMALL, in Vidal v. Elster, 602 U.S. 286 (2024), https://www.supremecourt.gov/opinions/23pdf/22-704_4246.pdf.  The Court rejected the trademark applicant’s argument that this provision of the Trademark Act violates the First Amendment.

Steve Elster applied to register TRUMP TOO SMALL in relation to shirts.  This phrase referred to an exchange between then-candidate Donald Trump and Senator Marco Rubio during the 2016 Republican primary debate.  The application was filed on an intent-to-use basis, but the applicant sells shirts featuring TRUMP TOO SMALL as shown on the website, www.trumptoosmall.com.

The USPTO Examiner refused registration because the Trademark Act prohibits registration of a mark that “consists of or comprises a name … identifying a particular living individual except by his written consent.”  15 U.S.C. §1052(e).

Elster argued that this prohibition on registration of personal names is unconstitutional because it improperly restricts freedom of speech under the First Amendment.  In recent years, the Supreme Court has struck down provisions in the Trademark Act prohibiting registration of disparaging and scandalous marks on that basis.

However, the Supreme Court held that the names clause does not run afoul of the First Amendment.  Therefore, the Court found that TRUMP TOO SMALL was properly refused registration.  Although several Justices wrote concurring opinions in this case, they all agreed the names clause is constitutional.

The Court recognized that the names clause is a content-based restriction on speech.  In general, such restrictions are “presumptively unconstitutional” and required heightened scrutiny.  Nonetheless, the Court found that the names clause and at least some other content-based restrictions on trademark registration are constitutional.  In his majority opinion, Justice Thomas discussed the history of trademark protection in the U.S. and explained that “trademark rights have always coexisted with the First Amendment, despite the fact that trademark protection necessarily requires content-based restrictions.”  To take one example, the Trademark Act prohibits registration of a mark that is likely to cause confusion:  “It is impossible to determine whether one trademark is the same as (or confusingly similar to) another without looking at the content of the two marks.”   In particular, Justice Thomas emphasized that the names clause is “grounded in a historical tradition” dating back to the common law.

Unlike the provisions barring registration of disparaging and scandalous marks, the prohibition on registration of personal names is viewpoint neutral.  The majority opinion explained that viewpoint discrimination is a particularly “egregious form of content discrimination,” which targets not merely a subject matter “but particular views taken by speakers on a subject.”  However, Justice Thomas wrote, the names clause “does not facially discriminate against any viewpoint.”

No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent.  It does not matter “whether the use of the name is flattering, critical or neutral.”  The Government is thus not singling out a trademark “based on specific motivating ideology or the opinion or perspective of the speaker.”  [citations omitted]

The Court rejected Elster’s claim that the names clause constitutes viewpoint discrimination “in practice” because it is easier to obtain consent for a trademark that flatters a person rather than mocks him.  Justice Thomas noted that there are many reasons that a person may be unable to secure another’s consent – even when the trademark is neutral or complimentary – such as avoiding any association with the goods, or to prevent his name from being exploited for another’s gain.  Moreover, again emphasizing the history of trademark protection, Justice Thomas noted that a “party has no First Amendment right to piggyback off the goodwill another entity has built in its name.”