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Vidal v. Elster: Implications for Trademark Law and the First Amendment

Credit: Douglas Rissing

The Supreme Court’s recent decision in Vidal v. Elster carries significant implications for both trademark law and the First Amendment. The ruling upheld the USPTO’s refusal to register the trademark “TRUMP TOO SMALL,” affirming that such refusal does not infringe upon First Amendment rights. The Court unanimously decided that prohibiting trademarks containing a living person’s name without their consent does not violate free speech rights. This decision underscores the delicate balance between trademark law and the First Amendment.

In 2018, Steve Elster attempted to register “TRUMP TOO SMALL” for use on shirts as political commentary. The USPTO rejected the application, citing two provisions of the Lanham Act: Section 2(c) (15 U.S.C. § 1052(c)), which prohibits marks from identifying living individuals without their consent, and Section 2(a) (§ 1052(a)), which bars marks from falsely implying a connection with individuals. Elster appealed, arguing that these restrictions violated his First Amendment rights by not being narrowly tailored to serve a compelling government interest.

The Trademark Trial and Appeal Board (TTAB) upheld the USPTO’s decision regarding Section 2(c) but did not address Section 2(a). The Court of Appeals for the Federal Circuit later overturned the TTAB’s decision, asserting that denying registration under Section 2(c) unconstitutionally restricted free speech by limiting criticism of a government official.

The Supreme Court subsequently took up the case, granting certiorari to determine if refusing to register a trademark under 15 U.S.C. § 1052(c) violates the Free Speech Clause of the First Amendment when the mark criticizes a government official.

On June 13, 2024, the Supreme Court ruled that the USPTO did not violate the First Amendment by refusing to register “TRUMP TOO SMALL.” The decision affirmed federal law’s prohibition on trademarks containing other people’s names, rejecting the argument that it infringed upon constitutional rights. This ruling overturned the Federal Circuit’s decision, which had found the refusal to register the mark unconstitutional under free speech grounds. The Court’s unanimous decision clarified that barring trademarks with a living person’s name without consent does not infringe upon free speech rights, noting the decision’s intended narrow scope.

While the opinion was unanimous, the Supreme Court Justices had varying opinions on the constitutionality of the Lanham Act’s names clause. Some emphasized the historical context, while others argued for a standard grounded in trademark law and First Amendment precedent. They all agreed on the importance of First Amendment implications in evaluating content-based trademark restrictions.

The relationship between trademark law and the First Amendment has been ongoing, even though trademark protections involve making distinctions based on content. While trademark rights are important, they must sometimes give way to uphold the principles of free expression. The interaction of trademark law and the First Amendment is complex, especially regarding expressive works and parodies. When using a mark in commerce causes consumer confusion or misattribution of the source, that must be balanced with First Amendment considerations.

The courts have developed tests to try to strike this balance. The Rogers test, for instance, is applied to reconcile a defendant’s First Amendment interests with a plaintiff’s Lanham Act claim. Under this test, the Lanham Act applies only to an expressive work if the defendant’s use of the mark is not artistically relevant or explicitly misleads consumers about the work’s source or content. This test effectively employs the First Amendment as a rule of construction to avoid conflict between the Constitution and the Lanham Act. 

In the context of parodies, courts have accorded considerable leeway to parodists whose expressive works aim their parodic commentary at a trademark or a trademarked product. However, they have not hesitated to prevent a manufacturer from using an alleged parody of a competitor’s mark to sell a competing product. A successful parody must simultaneously convey that it is not the original and is instead a parody.

Last term, in Jack Daniel’s v. VIP Products, the Supreme Court clarified that the Rogers test and its heightened First Amendment protections do not apply when the allegedly infringing mark is used as a source identifier, “as a designation of source for [the alleged infringer’s] own goods.” The Court explained that it confined Rogers to cases where the trademark does not designate a work’s source but is used “solely to perform some other expressive function.”

In conclusion, while trademark protections require making content-based distinctions, trademark rights sometimes yield to uphold free expression principles. The balance between consumer protection and free expression remains crucial in trademark law.

Intellectual Property

The Internet enables the free exchange of ideas and content that, in turn, promote creativity, commerce, and innovation. However, a balanced approach to copyright, trademarks, and patents is critical to this creative and entrepreneurial spirit the Internet has fostered. Consequently, it is our belief that the intellectual property system should encourage innovation, while not impeding new business models and open-source developments.