Can the USPTO refuse to register a proposed trademark for a t-shirt slogan mocking former President Donald Trump, or does such a restriction violate the First Amendment?
Endeavoring to answer this question—and more broadly to determine the constitutionality of the “living individual” restriction in Section 2(c) of the Lanham Act (15 U.S.C. § 1052(c))—the Supreme Court recently heard oral argument in Vidal v. Elster, a dispute stemming from the refusal to register the slogan “TRUMP TOO SMALL” for t-shirts and other apparel. The USPTO initially denied registration of the proposed mark, based in part on § 1052(c)’s prohibition of federal registration for marks that name “a particular living individual except by his written consent.” The Federal Circuit ultimately reversed this ruling, finding that, as applied to the proposed mark criticizing a public figure like Donald Trump, this statute “involves content-based discrimination that is not justified by either a compelling or substantial government interest.” In re Elster, 26 F.4th 1328, 1331 (Fed. Cir. 2022).
The Supreme Court must now determine whether § 1052(c)’s mandate to refuse registration of a proposed trademark that criticizes a living person—who happens to be a government official or public figure like former President Trump—unlawfully restricts free speech. The questions posed by the Justices during oral argument hint at both their desire to overturn the Federal Circuit and their lack of certainty regarding the most appropriate legal theory upon which to base their conclusion that § 1052(c) does not violate the First Amendment.
In defense of the statute, the United States primarily argued that denying trademark registration is more akin to refusing a government benefit rather than proactively restricting speech. Deputy Solicitor General Malcom Stewart emphasized that the law in no way prohibits Mr. Elster from using the slogan TRUMP TOO SMALL on the products he sells. He simply cannot obtain federal recognition of his right to exclusively use the slogan as an indicator of the source of the clothing apparel.
The Justices, appearing skeptical of the “government benefit” theory, probed for alternative grounds for upholding the statute. Viewed in the First Amendment framework, the Justices considered whether to instead treat the Principal Register as a limited public forum and deliberated the nature of the speech and level of scrutiny to apply. In Matal v. Tam, the 2017 decision finding the “disparagements clause” of § 1052(a) unconstitutional, the Court determined that “[s]peech may not be banned on the ground that it expresses ideas that offend,” but left open the question of whether trademarks are commercial speech and whether strict scrutiny or a more relaxed scrutiny should apply. 582 U.S. 218, 223 (2017). In 2019, through Iancu v. Brunetti, the Court clarified that the disparagements clause was a viewpoint-based speech restriction that violated the First Amendment, and then similarly found that § 1052(a)’s prohibition of “immoral” or “scandalous” matter was an impermissible viewpoint-based restriction. 139 S. Ct. 2294, 2297 (2019). Relying upon the legacy of these recent opinions, Mr. Elster argued that the living person’s bar is both content-based (by selectively withholding legal trademark protections generally available to others) and viewpoint-based (given that people will likely only consent to marks that use their names favorably).
The Justices appear keen to find a simpler solution. Justice Gorsuch asked whether the Lanham Act’s long history of prohibiting inappropriate trademark registrations could itself justify the prohibition against one registrant being allowed to “monopolize” the use of another person’s name. Justice Sotomayor theorized that the living person bar simply does not infringe on Mr. Elster’s speech because “the government’s not [actually] telling him he can’t use the phrase.” Regardless of the legal basis that ends up in the opinion, the Court will likely uphold § 1052(c)’s living person provision, leaving Mr. Elster free to sell apparel bearing slogans about Trump, just without the benefit of federal trademark protection.