Trademark Trumped

On June 13, 2024, the U.S. Supreme Court decided a case that addresses restrictions to registrable trademarks under section 2(c) of the Lanham Act. Vidal v. Elster involves an application by “Steve Elster to register the trademark ‘Trump too small,’ accompanied by an illustration of a hand gesture, to use on shirts and hats. The mark draws on an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 presidential primary debate.”

The petitioner planned to use the phrase to convey a message about the former president and his policies. However, section 2(c) of the Lanham Act prohibits the registration of a mark that “[c]onsists of or comprises a name…identifying a particular living individual except by [their] written consent.” The petitioner did not have Trump’s consent. This scenario exposed an inherent tension between trademark law and the First Amendment. While trademark law aims to protect consumers from confusion regarding the source of goods or services, the First Amendment protects individuals’ rights to express themselves through trademarks in certain contexts, such as artistic expression, criticism, commentary, or parody.

The United States Patent and Trademark Office (USPTO) initially denied registration of the proposed mark, based in part on section 2(c)’s prohibition. The Federal Circuit later reversed, concluding the names clause violated the First Amendment because, as it pertained to the proposed mark criticizing a public figure such as Trump, the statute “involves content-based discrimination that is not justified by either a compelling or substantial government interest.” The Supreme Court granted certiorari and reversed, concluding section 2(c) did not violate the First Amendment in this case.

Vidal v. Elster tackles the complex intersection between trademark registration and freedom of speech under the First Amendment. The holding differentiates certain speech for more-intensive scrutiny by the USPTO. In this way, it carries significant implications for general rights of publicity and privacy and the freedom of political speech.

This article originally appeared on Wilson Elser.

About the Author:

Ani Khachatryan is an associate at Wilson Elser. ani.khachatryan@wilsonelser.com