Supreme Court to Examine Free Speech Limits in “TRUMP TOO SMALL” Trademark Case

August 3, 2023

The intersection of free speech and private business branding is once again in front of the Supreme Court of the United States. On June 5th, the Supreme Court decided to hear Vidal v. Elster, Case 22-704, an appeal from the Federal Circuit. At issue in Vidal is the registration of the trademark “TRUMP TOO SMALL” for use in the sale of t-shirts, hats, and other merchandise. The Court will address the registration of a mark criticizing a government official or public figure that contains the individual’s name. The case is expected to be presented in the fall, and a ruling is anticipated sometime next year.

The Mark’s Origin and Court Progression

Dating back to an original application for the mark in 2018, Elster sought to sell t-shirts referring to a remark by Senator Marco Rubio in a 2016 presidential debate which aimed to convey that certain features of President Trump and his policies are diminutive. The United States Patent and Trademark Office (USPTO) rejected Elster’s proposed mark, reasoning that 15 U.S.C. § 1052(c) prevents registration of a mark that:

“Consists of or comprises a name… identifying a particular living individual” without the individual’s “written consent.”

The proposed mark attempted to use President Trump’s name without his consent, and in accordance with Section 1052(c), the USPTO denied registration. During the application process, Elster argued that the USPTO’s denial violated his First Amendment right to free speech.

Elster appealed the decision to the Trademark Trial and Appeals Board (TTAB) with the same constitutional free speech argument under permissible criticism of a political figure. The TTAB affirmed the USPTO denial of the mark stating that 15 U.S.C. § 1052(c) was not an unconstitutional restriction on free speech. Elster then successfully appealed to the Federal Circuit, who determined that:

  • Trademarks are private speech entitled to First Amendment protection.
  • Elster’s claim to the mark was valid and “undoubtedly substantial” because the First Amendment is rooted in the “free discussion of governmental affairs.”
  • Government argument that its substantial interest in protecting state-law privacy and publicity rights outweighed Elster’s free speech rights was untenable.

The Biden administration then asked the Supreme Court of the United States to review the Federal Circuit’s decision having resulted in the Federal Circuit determining that the USPTO and TTAB’s application of Section 1052(c) was unconstitutionally applied to the proposed mark.

Supreme Court to Address Free Speech and Intellectual Property Intersection

The Supreme Court has specifically limited its review to:

“[w]hether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”

Even with a decision that the mark cannot be registered, Elster will be free to use his mark but without registration it may allow infringers to also use the mark if he cannot establish common law trademark rights. Because of the question presented, it is likely the Court will focus on the First Amendment issue in a greater depth than recent cases of similar issues.

Recent Free Speech v. Intellectual Property Cases

In recent years, the Court has heard several cases involving the intersection of free speech and intellectual property rights. Starting with Matal v. Tam in 2017, the Court determined the disparagement clause, 15 U.S.C. § 1052(a), which prohibits trademarks that disparage the members of a racial or ethnic group, violates the free speech clause of the First Amendment. In Tam, the Court reviewed Tam’s registration of “SLANTS” for his Asian American Rock Band and found that the disparagement clause violated the First Amendment as applied. The Court continued with Iancu v. Brunetti in 2019, finding that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks infringes the First Amendment through review of Brunetti’s “FUCT” mark for his clothing brand.

During the most recent term, the Court accepted appeals of two cases at intersection of business interests and free speech in Andy Warhol Found. For the Visual Arts, Inv. V. Goldsmith and Jack Daniel’s Properties, Inc. v. VIP Prod. LLC. In both decisions, the Court sided with the mark holders and reasoned those commercial interests outweighed countervailing arguments concerning speech or expression.

The Warhol Court discussed the alleged transformative nature of photographic renditions of the work as published which was negated by the common commercial purpose of the photographer who created the original work. The Jack Daniel’s Court analyzed the alleged satirical nature of Bad Spaniel’s dog toy, which was negated by confusion that Jack Daniel’s itself would be seen as the source of the toy. In Jack Daniel’s, the Court considered the likelihood of confusion and made clear that the use of a mark with other expressive content on top of the source does not change the result of impression on the brand.

Where Does the Court Go From Here?

With all these decisions, the Court has left open the more general question of whether a trademark registration may be refused as a restriction on free speech as opposed to a condition on a government benefit. As to whether the application of humor versus criticism or the importance of the political nature of the mark will be a crucial determining aspect is yet to be seen. Many companies will hope to see a broader rule coming from Elster to determine their ability to register marks and to enforce their rights as to potential infringement. Regardless of the Court’s decision, their prior decisions have made clear the importance to protect your rights as a brand and individual while balancing the First Amendment’s right to free speech.

KJK maintains premier eCommerce and Intellectual Property practice groups for circumstances relating to the creation and protection of expressive works and intellectual property infringement. If you have any questions or would like to discuss further, please reach out to Antonio Dempsey (AFD@KJK.com), or Kyle Stroup (KDS@kjk.com) for further information.