The U.S. Supreme Court has ruled that Steve Elster cannot trademark the phrase "Trump too small," preserving a key component of the Lanham Act.
Law And Crime reported that the U.S. Supreme Court delivered its judgment in Vidal v. Elster, concerning a trademark related to former President Donald Trump’s hand size. Steve Elster had sought to trademark the phrase after it was famously referenced during a 2016 GOP primary debate between Trump and Sen. Marco Rubio.
The phrase “Trump too small” was intended for use on merchandise. However, the U.S. Patent and Trademark Office (PTO) denied Elster’s application based on the Lanham Act’s “names clause,” which prohibits trademarking a name without the individual’s consent.
The PTO’s internal tribunal upheld this decision, leading Elster to appeal to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit reversed the PTO's decision, ruling that the names clause violated the First Amendment.
In a majority opinion by Justice Clarence Thomas, the Supreme Court overturned the Federal Circuit's ruling and preserved the names clause of the Lanham Act. “Although a content-based regulation of speech is presumptively unconstitutional as a general matter, we have not decided whether heightened scrutiny extends to a viewpoint-neutral trademark restriction,” Thomas wrote.
The Supreme Court's bench agreed on the final decision but presented varying legal analyses. The Court noted that this trademark case represented a rare intersection of First Amendment law and trademark law.
The ruling implies that Elster can still sell merchandise with the "Trump too small" phrase but cannot receive federal trademark registration. Federal registration would have provided certain legal advantages, including prima facie evidence of ownership in potential lawsuits against imitators.
Justice Amy Coney Barrett, in her concurrence, accepted the restriction but opposed the Court’s reliance on historical precedent. “The Court’s evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause,” Barrett argued.
She emphasized that trademark protection is inherently content-based and can coexist with the First Amendment.
Justice Barrett also criticized the majority opinion's approach to using tradition in resolving the First Amendment issue. She asserted that while content-based registration restrictions are constitutional when they align with the purposes of the trademark system, the current historical evidence does not support this approach.
Justice Brett Kavanaugh concurred, highlighting “the long history of restricting the use of another’s name in a trademark” as justification for the ruling. He supported the preservation of established practices within trademark law.
Justice Sonia Sotomayor, in her concurrence, directly challenged Justice Thomas’s reasoning. She contended that Thomas mischaracterized her analysis by focusing primarily on cases involving cash subsidies and union dues. “According to JUSTICE THOMAS (who is joined by two Justices), I focus primarily on cash-subsidy and union-dues cases. A closer look at this opinion and the cases that I cite will reveal that is not exactly true,” she stated.
Additionally, Sotomayor emphasized that precedent cases Thomas referenced are irrelevant to the names clause issue. “JUSTICE THOMAS responds that these precedents are an ‘ill fit’ for the names clause because this case does not involve ‘cash subsid[ies],’ ‘union dues,’ or a ‘limited public forum.’ That response misses the entire point,” she argued.
This landmark ruling marks the Supreme Court's first case addressing the constitutionality of content-based but viewpoint-neutral trademark restrictions. The Court referenced previous cases where viewpoint-based trademark restrictions, such as those on “immoral” or disparaging marks, were invalidated.
The Court acknowledged that trademark law and First Amendment law rarely intersect despite some crucial similarities. Justice Thomas’s opinion noted that “several features of trademark counsel against a per se rule of applying heightened scrutiny to viewpoint-neutral, but content-based trademark regulations.”
He further explained that trademark rights have historically coexisted with First Amendment rights, despite necessary content-based distinctions. Ultimately, the decision reinforced the coexistence of trademark protections and free speech principles.
The ruling reinforces the longstanding tradition of prohibiting the trademarking of another’s name without consent. As Justice Thomas concluded, “We see no reason to disturb this longstanding tradition.”
The Court’s decision will likely influence future cases involving content-based but viewpoint-neutral restrictions within trademark law.
The Supreme Court's recent ruling preserves the names clause in the Lanham Act, preventing Steve Elster from trademarking the phrase "Trump too small." Though unified in the decision, the Justices presented divergent legal reasonings.
Justice Thomas’s majority opinion emphasized the coexistence of the First Amendment and trademark law, while Justices Barrett, Kavanaugh, and Sotomayor provided distinct perspectives.
This decision underscores the balance between maintaining longstanding trademark traditions and adhering to constitutional free speech principles.
