By Jessie Hess ‘26
The Supreme Court heard Vidal v. Elster and will weigh in on restrictions on free speech in violation of the First Amendment contained in the Lanham Act. Steve Elster attempted to trademark the phrase “TRUMP TOO SMALL” for use on shirts intended to serve as political criticism of Donald Trump. A USPTO examiner rejected Elster’s mark as invalid under 15 U.S.C. 1052(a) which states that a trademark can be refused when a mark may falsely suggest a connection with a person and 15 U.S.C. 1052(c) which states a mark may be refused when it comprises a name identifying a particular individual without their consent.
Elster appealed both bases of rejection to the Trademark Trial and Appeal Board who affirmed the decision solely under 15 U.S.C. 1052(c) grounds. Elster then appealed to the Federal Circuit who reversed the Trademark Trial and Appeal Board’s decision and held that the application of 15 U.S.C. 1052(c) was unconstitutional as applied to Elster’s proposed mark. The court reasoned that a standard of either intermediate or strict scrutiny applied because the trademark registration offers substantial advantages and since the mark is in a context where controversial speech is part of the trademark function it must be judged under First Amendment scrutiny.
The Federal Circuit then weighed the First Amendment interests against the governmental interests and found for Elster. The Federal Circuit noted that speech concerning public affairs plays a vital role in self-government and the importance outweighs that of even general self-expression, so the fullest First Amendment protection applies to speech concerning public officials. The government’s interests are primarily grounded in privacy and publicity rights however the right to privacy does not extend to public officials absent malice and the government has no interest in protecting the privacy of a public individual from political criticism. As to the right to publicity, the court reasoned that there was no claim that Trump’s name was being used in a way that misappropriated his value and the mark does not plausibly suggest that Trump endorsed Elster’s product. The Federal Circuit also reasoned the right to publicity is constrained when applied to criticisms of public officials as in the case of Elster’s mark. Although only dicta because Elster raised an as applied challenge to the constitutionality of the provision, the court also noted that 15 U.S.C. 1052(c) may be constitutionally overbroad under the First Amendment Overbreadth Doctrine.
The USPTO then filed a petition for a writ of certiorari which was granted by the Supreme Court of the United States on June 5, 2023. Oral argument took place on November 1, 2023, and SCOTUS seemed hesitant to overturn the statute as unconstitutional.
The USPTO raised three arguments. First, trademark registration is a federal benefit and thus, denying the trademark does not impede Elster’s speech. Second, 15 U.S.C. 1052(c) is viewpoint neutral because it only looks at whether a person has consented and not whether the mark is critical or flattering. Third, granting the trademark registration about a political figure would hamper free speech because it would be giving Elster an exclusive right to exclude others. The government pushed the court to adopt a rational basis test.
Although the court seemed skeptical of the benefits theory, particularly Justice Alito who cited his decision in Tam where he had stated a contrasting view on whether trademark registration qualified as a federal benefit, Justice Gorsuch emphasized the long tradition of similar restrictions in common law and the court seemed more receptive to the viewpoint neutral argument and the fact that granting a trademark would restrict other speech. Justice Barrett raised concerns about a third-party getting Trump’s consent and then registering the trademark to exclude Elster from his speech. The government answered that to do so the third party would have to be actively using the mark as a source identifier. .
Elster argued strict scrutiny should apply. He stated three propositions. First, the provision withholds valuable legal protections for certain speech which impedes free speech. Second, the provision is unrelated to the purposes of the trademark regime. Third, speaker-based discrimination lends itself to viewpoint-based discrimination because people are more likely to consent to favorable marks than critical ones.
Justice Jackson questioned whether the clause is unrelated to the purposes of trademark registration if it helps ensure that consumers do not confuse the product for having an association to the person. Elster asserted that 15 U.S.C. 1052(a) serves that same function. Justice Roberts raised questions about the registration of trademarks around political figures hampering free speech and Elster responded that the mark must function as a source identifier which alleviates the majority of those concerns.
This case raises questions about the importance of free speech, particularly when criticizing public officials, and whether facially neutral restrictions may violate viewpoint-discrimination based on practical effect. How the justices view the purpose of trademark law may be outcome determinative, because the case highlights a tension between limiting the free speech of those excluded and enhancing the free speech of the markholder. Since it is an as applied challenge, SCOTUS may hold the statute unconstitutional as applied to Elster without striking it down. However, oral argument raised questions about the practical effect a finding that the provision is unconstitutional would have and whether Congress could draft a similar provision with a narrower reach.