<em> Vidal v. Elster <em> “TRUMP TOO SMALL” Is Out, Where Do We Go From Here?
Following legal history and tradition, the SCOTUS reversed the Federal Circuit’s ruling in Vidal v. Elster, affirming the Lanham Act’s name clause does not compromise First Amendment speech and granting the USPTO the right to deny registration for the phrase “Trump too Small." This ruling is bound to set a precedent for future trademark issues.
Attribution
TrumpTooSmall, CC-BY-SA 4.0, via Wikipedia Commons
The Supreme Court's ruling in Vidal v. Elster highlighted the overlap between trademark law and First Amendment speech protections. The issue centered on whether the Lanham Act’s “names clause”—prohibiting trademark registration of a living person's name without consent—violated free speech principles. In 2018, Californian Steve Elster tried to trademark the phrase “Trump Too Small” with a small hand sketch, referencing a notable back-and-forth between Florida Senator Marco Rubio and President Trump in a 2016 Republican presidential debate. According to his trademark registration application, Elster intended to print the design on T-shirts. The United States Patent and Trademark Office (USPTO) ultimately denied the registration under the Lanham Act’s “names clause” (15 U.S.C. §1052(c)), as the clause prohibits registering a mark using a living individual’s name without consent.
The Trademark Trial and Appeal Board (TTAB) upheld the refusal and the Federal Circuit reversed its decision, holding the names clause “invalidated the mark” because of its viewpoint. Elster argued that the refusal violated his First Amendment rights. Upon issuing a writ of certiorari and reversing the Federal Circuit’s decision, the Supreme Court confirmed that trademark restrictions must be carefully reviewed under free speech principles. This is especially relevant when dealing with public issues involving political figures.
Justice Thomas led the majority opinion in Vidal v. Elster, explaining the Lanham Act names clause as a content-based restriction on speech based on the message being explicitly expressed in the mark’s content. The opinion noted that “preventing consumer confusion” and “protecting goodwill” are essential to upholding trademark law. Under the First Amendment, content-based restrictions need to pass under heightened scrutiny. The Court’s decision will impact issues beyond its original scope, such as celebrity likeness and unauthorized name use.
This case is not the first of its kind by any means—Matal v. Tam (2017) and Iancu v. Brunetti (2019) mirror many aspects. The court in Matal invalidated the Lanham Act’s disparagement clause (which banned trademarks deemed offensive) because the Act was considered to “permit viewpoint discrimination.” Likewise, in Brunetti, the Court struck down banning registration of “immoral” or “scandalous” trademarks, holding that the restriction could not overcome First Amendment expression protections.
However, the Court argued the names claus e does not target specific viewpoints or ideas. The majority opinion stressed that the clause aims to “save individuals” from unauthorized use of their names and likenesses. The opinion also explained how trademark law historically protected owners and prevented consumer deception. The Justices of the Court, however, notably disagreed on the role of historical precedent in creating a standard to evaluate content-specific trademark restrictions. While Justice Thomas emphasized the importance of legal history and tradition in the decision, Justices Sotomayor, Kavanaugh, and Coney Barrett proposed using different tests to create a “generally applicable standard.”
Prior to the ruling, several artists had successfully used the Lanham Act and state law to guard their work from unauthorized use. For example, Browne v. McCain (2008) involved Browne suing for the use of “Running on Empty” during the McCain campaign. Additionally, in Byrne v. Crist (2010), Talking Heads frontman Byrne sued Governor Charlie Crist’s campaign for using “Road to Nowhere” in an ad. Considering recent advancements in the media and entertainment industries, the degree of legal protection against unauthorized use is bound to evolve.
The Court decided this case at a timely point in American politics, specifically regarding unauthorized use. President Trump recently posted an AI-generated image of Taylor Swift appearing to endorse his campaign, sparking questions on whether Lanham Act violations took place. If Swift aimed to seek recourse under the Lanham Act, she could assert that the false portrayal misled her base and heavily impacted voting records. Additionally, Lanham Act provisions can work in tandem with state laws to govern the right of publicity.
The decision in Vidal v. Elster will likely influence courts to adopt more nuanced approaches to intellectual property and First Amendment cases. Future discourse should center on political messaging, consent, and other forms of expression to better tackle issues. The decision is an excellent reminder that the legal field must evolve as the scope of intellectual property expands.