'Trump Too Small' at SCOTUS: arguments preview

The US Supreme Court will hear arguments on November 1, 2023, in Vidal v Elster, a case addressing whether the trademark registration bar on incorporating a living individual’s name, portrait or signature in a mark without their written consent is constitutional.

As the court may use this opportunity to clarify some of the competing interests between federal trademark law, publicity and privacy rights, and the First Amendment, many in the legal community are following the case with anticipation.

Factual and procedural background

This tale begins in 2016 when, during a presidential primary debate, US Senator Marco Rubio referred to President Trump as “too small,” in a dig at both his policies and physical features including his hands. A lawyer named Steve Elster subsequently filed a US trademark application on the phrase ‘Trump Too Small’ for use on shirts and sweatshirts.

The Examining Attorney refused the application on the basis of the Lanham Act Section 2(c), 15 U.S.C. § 1052(c), which prohibits registration of a mark that identifies a living individual without his or her written consent.

The Trademark Trial and Appeal Board of the US Patent and Trademark Office affirmed the refusal. (The Examining Attorney also refused registration based on Lanham Act Section 2(a)’s prohibition on false association with a person. The 2(a) refusal was not addressed by the TTAB or on further appeals, though.)

The Federal Circuit reversed, holding that Section 2(c) is unconstitutional and unduly restricts free speech. This prompted the USPTO to file a certiorari petition with the Supreme Court for clarity.

This is the third case in less than a decade that the Supreme Court has taken up on the constitutionality of a trademark registration bar. In Matal v Tam, the court struck down the disparagement provision of Section 2(a), which prohibited registration of racist or demeaning terms.

In Iancu v Brunetti, the court struck down another provision of Section 2(a), specifically the ban on registration of immoral and scandalous marks. The court deemed each ban to be an unconstitutional form of discrimination against viewpoint.

What we can expect at oral arguments

1)         Whether 2(c) is viewpoint neutral

A primary question that the justices likely will ask the parties’ counsel is to elaborate further on their reasoning as to whether they deem Section 2(c) as viewpoint neutral.

Elster has argued that it is not, including because the only way around a 2(c) refusal is to have written consent from the person referenced by the trademark. Because only approving messages of another person will lead to consent, messages critical of a person will not receive their consent. This would include marks like ‘Trump Too Small’ or ‘No Joe in 2024,’ says Elster. Thus, as his argument states, 2(c) suppresses critical viewpoints and burdens political speech.

Elster also has pointed out that not only the practical effect, but also the very purpose, of the clause is to suppress unwanted speech. As explained in his brief, the legislative record of the clause shows that Congress enacted it to discourage speech it deemed offensive. For instance, the statute’s drafters announced that they found the “idea of prostituting great names by sticking them on all kinds of goods” to be “very distasteful”—especially presidents’ names.

Elster has contended that ‘Trump Too Small’ should not violate 2(c) in large part because the public would not presume a connection with or approval by Trump, given the very nature of the mark’s connotation. The government contrastingly states that 2(c) does not require a presumed connection between the identified person and mark for a registration refusal; merely identifying an individual satisfies 2(c).

The USPTO contends that 2(c) has nothing to do with whether a mark reflects critically, neutrally, or favourably on the living person. A mark only needs to identify an individual without consent—or be critical of a president—for it to run afoul of the provision.

The government has further explained that the purposes of Section 2(c) are to protect people’s rights of privacy and publicity, as well as protect the public from source deception. Given its viewpoint neutrality, says the USPTO, there is no need for heightened scrutiny.  Moreover, it has asserted that 2(c) does not suppress critical speech, and if anything, 2(c) supports it. Granting registration on a mark such as ‘Trump Too Small’ would only limit other people’s ability to criticise Trump.

The court could question the government’s justification for the statute under intermediate scrutiny, which the Federal Circuit applied to the statute. This level of scrutiny on a speech restriction requires a reasonable basis for the restriction—one that is no broader than necessary. Elster insists that the USPTO has not put forth any real-world harm addressed by the clause, nor has it defended the effects Elster views to be viewpoint-based.

2)         Whether a Lanham Act bar is a restriction on speech

The court has not to date opined on whether a trademark registration impacts free speech.

The USPTO, in short, contends that a refusal to register does not restrict speech, because it does not curb one’s use of the mark—and, rather, registration bars are merely conditions on government benefits.

Per Elster, trademark registrations inherently impact free speech because not being able to secure a registration will cause people to otherwise not pursue brands based on their chosen messages. If the court agrees with this position, then given the court’s recent lack of qualms in chipping away at Lanham Act restrictions, the court may be highly inclined to also strike down Section 2(c) for overbreadth.

On a related note, justices might inquire about the portion of 2(c) that reads “except by his written consent”. The court could inquire whether removing that phrase from the clause would survive First Amendment scrutiny, by eliminating the negative practical effects of curbing messages that Elster has detailed.

3)         Will the court address the ‘Trump Too Small’ mark itself?

As noted above, the court has struck down two other Lanham Act provisions. The Matal and Brunetti decisions issued during Trump’s presidential term.

Many might speculate, even it is not evident in the justice’s questions at oral argument or in the forthcoming decision, as to whether the ‘Trump Too Small’ mark shapes their reasoning.

It would be curious if the mark might sway the justices toward the government’s position. That is, at least one of the three Trump-appointed sitting justices might be hard-pressed to do away with a statutory prohibition against a mark that clearly mocks the president who appointed them.

David Bell is a partner at Haynes and Boone. He can be contacted at:  david.bell@haynesboone.com