From Rubio's Joke to the Supreme Court: The Journey of 'Trump Too Small' in Vidal v. Elster

Intro

Does the Lanham Act’s restriction on registration of trademarks that include an individual’s name without the consent of such individual violate the Free Speech Clause of the First Amendment, even when the mark expresses criticism of a government official or public figure? In Vidal v. Elster (2024), the Supreme Court unanimously answered “No,” diverging from its recent line of cases holding that other provisions of the Lanham Act unduly restrict free speech rights.[1]

Background

Steve Elster is an attorney and political activist who, following a 2016 exchange between Senator Marco Rubio and then-presidential candidate Donald Trump, applied to register the mark TRUMP TOO SMALL for use on T-shirts and other apparel. During the 2016 Republican presidential primary, Rubio joked about the size of Trump’s hands before a debate. Elster then sought to register the phrase TRUMP TOO SMALL to “convey that some features of President Trump and his policies are diminutive” and express his view on “the smallness of Donald Trump’s overall approach to governing as president of the United States.”[2]

The U.S. Patent and Trademark Office (USPTO) rejected Elster’s application, citing sections 2(a) and 2(c) of the Lanham Act as the bases for refusal.[3] Section 2(a) bars registration of any mark that “falsely suggest[s] a connection with persons, living or dead,” while 2(c) prohibits registering a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual” without their consent.[4] Because the TRUMP TOO SMALL phrase includes Trump’s name, Trump’s consent would be required for registration.

Elster appealed the USPTO’s decision to the Trademark Trial and Appeal Board, arguing that sections 2(a) and 2(c) constitute impermissible content-based restrictions on speech. The Board did not address the rejection on 2(a) grounds, but upheld the refusal solely on the 2(c) basis, concluding that the provision is constitutional and serves the compelling government interests of “protecting the named individual’s rights of privacy and publicity and protecting consumers against source deception.”[5] Subsequently, the Federal Circuit reversed the Board’s decision, finding that the denial of registration did in fact unconstitutionally restrict Elster’s right to free speech in violation of the First Amendment.[6]

The Federal Circuit considered two recent Supreme Court decisions, Tam and Brunetti, in reaching its conclusion. In Matal v. Tam, the Supreme Court considered the denial of an application for the mark THE SLANTS under section 2(a) of the Lanham Act, which prohibits the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.”[7] The Court found the provision facially unconstitutional under the First Amendment’s Free Speech Clause. Two years later in Iancu v. Brunetti, the Court similarly struck down another prohibition on registration of “immoral[] or scandalous” marks as violative of the First Amendment.[8] Noting that while neither decision resolved the case at hand, the Federal Circuit found that the Tam and Brunetti cases establish that trademarks can be “expressive content” with “powerful messages” deserving of First Amendment protection. The Federal Circuit further determined that the government’s substantial interest in protecting privacy and publicity rights did not outweigh Elster’s free speech rights and overturned the Board’s decision.[9] The Supreme Court subsequently granted certiorari to consider whether section 2(c) of the Lanham Act violates the First Amendment. 

Decision

Despite initial speculation that Tam and Brunetti would add favorable support to Elster’s case, the justices appeared unconvinced at oral argument. The Court remained skeptical of Elster’s argument that his free speech rights would be violated if the refusal stood, questioning whether there would be a free speech violation at all, as nothing would prevent Elster from using the phrase on apparel without a trademark registration. 

In its decision, the Court ruled unanimously in favor of the government, holding that the application of section 2(c) here does not violate the First Amendment.[10] Justice Clarence Thomas, writing for the majority, distinguished Tam and Brunetti as cases involving restrictions that discriminated based on viewpoint, whereas the restriction at issue in Elster is viewpoint-neutral but content-based, a situation not faced in the prior Lanham Act cases. While content-based restrictions are presumptively unconstitutional, the majority opinion notes that trademark law is inherently content-based yet has been able to coexist with the First Amendment without “constitutional concern.” Based on a review of the history and tradition of restricting usage of individuals’ names as trademarks, the majority concluded that section 2(c) is compatible with the First Amendment and reversed the Federal Circuit’s decision. 

Although all nine justices agreed that section 2(c) is not unconstitutional, there was a significant split in their reasoning. Thomas and the majority rooted the Court’s holding in history, finding the tradition of restricting use of trademarks containing a living person’s name without consent sufficient to conclude that the names clause can coexist and be compatible with the First Amendment. Justices Barrett and Sotomayor penned concurrences challenging the Court’s reasoning that history and tradition alone support its holding. Arguing precedent rather than tradition should be the basis upon which to support the Court’s reasoning, both justices wrote that content-based trademark registration restrictions have long been supported by case law.

What Next?

While the Court held that section 2(c) of the Lanham Act is not unconstitutional and TRUMP TOO SMALL is unregistrable without Trump’s consent, the Supreme Court was careful to note that this particular decision is a narrow one, leaving open the door for constitutional challenges to other viewpoint-neutral content-based trademark restrictions.[11]

[1] Vidal v. Elster, No. 22-704, 602 U.S. __ (2024)

[2] In re Elster, 26 F.4th 1328, 1330 (Fed. Cir. 2022).

[3] Id.

[4] 15 U.S.C. § 1052(a); 15 U.S.C. § 1052(c).

[5] In re Elster, 26 F.4th at 1330.

[6] Id.

[7] Matal v. Tam, 582 U.S. 218 (2017).

[8] Iancu v. Brunetti, 588 U.S. 388, 139 S. Ct. 2294 (2019).

[9] In re Elster, 26 F.4th at 1331.

[10] Vidal v. Elster, No. 22-704, slip op. at 22 (2024).

[11] Id.