By Matthew Holt
Matt is a 3L pursuing a JD and a Masters in Sports Law and Business at ASU Law. He is also the Senior Fellow for Scholarship in the McCarthy Institute. He has a strong interest in trademark and trade secret law. In addition to his intellectual property pursuits, Matt also has a passion for his work in civil litigation and the sports industry.
Case Background
The case of Vidal v. Elster, arising from a dispute over the registration of the trademark “Trump Too Small,” was argued in front of the Supreme Court on November 1, 2023. Political activist Steve Elster sought to register this trademark, referencing a remark from Sen. Mark Rubio during the 2016 presidential election debates, for use on t-shirts.[1] The United States Patent and Trademark Office (USPTO) denied the registration citing 15 U.S.C. § 1052(c), which prohibits the registration of a trademark that includes the name of a living person without that person’s consent.[2] Elster challenged the USPTO’s decision, arguing that § 1052(c) violates the First Amendment in that it is not content-neutral because it is only triggered by the use of a living person’s name.[3] Further, Elster asserted that “the statute ‘makes it virtually impossible to register a mark that expresses an opinion about a public figure[.]’”[4]
Katherine Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, argued that the statute is viewpoint-neutral, unlike previous cases cited by Elster where the Court had struck down statutes due to their viewpoint-based restrictions.[5] Vidal maintained that the standard for registration is the same, regardless of the content of the mark, if the person whose name is evoked in the mark provides consent.[6]
Oral Argument Results
The Court seemed skeptical of Elster’s position in the oral arguments that took place on Wednesday, November 1, 2023. The Justices were unconvinced of the actual negative impact on Elster’s ability to speak his mind and sell his merchandise. For example, Justice Sotomayor argued that the law does not stop Elster from selling goods with the phrase on them—Elster is still able to use the phrase as he wants.[7] Sotomayor also stated that there was not an infringement of free speech in this case.[8] Other Justices presented doubts about the merits of this case as well.[9]
Legal Implications
While it appears unlikely that the Court will rule in favor of Elster, it is important to examine the potential legal implications if § 1052(c) is struck down. A ruling in favor of Elster would create significant change in the areas of trademark law, free speech rights, and the right of publicity.
Several entities have submitted amicus briefs offering insight into particular views of this issue. Supporting neither party, the American Intellectual Property Law Association and Motion Picture Association agreed that the right to criticize under the First Amendment is more important than protecting a public figure’s right of publicity.[10] The International Trademark Association submitted a brief in support of Vidal conversely arguing that the statute should be upheld as a viewpoint-neutral safeguard for protecting one’s right of publicity from exploitation.[11]
With several invested parties and many questions to be answered in this decision, the Justices will have a lot of eyes focused on the result of this case.
Trademark Law
Significantly, a ruling in favor of Elster could be interpreted to mean that § 1052(c) is unconstitutional whenever it is used to deny a trademark registration on the basis of the use of a living person’s name. Such a ruling would make it easier for businesses to register trademarks that include the names of public figures. Those public figures would in turn struggle to properly register and protect their own names due to the massive influx of other registered marks in the marketplace. Along with this, consumers would have difficulty distinguishing between different sources of products and services and, and more trademark disputes would arise.
This ruling would be a major change in the law, as § 1052(c) has been used to deny trademark registrations for many years.[12] For example, the PTO has used § 1052(c) to deny trademark registrations for marks that include the names of celebrities, politicians, and even fictional characters.[13] Previously, this statute was used as a viewpoint-neutral review to protect the name and likeness of individuals from association with goods and services they have no connection to.[14] The USPTO has used this statute as a hardline restriction to avoid misleading consumers.[15] However, Elster argues there is no likelihood of confusion that Trump is associated with the shirt and its production.[16]
Free Speech
A ruling in favor of Elster could also have a positive impact on free speech. The First Amendment protects the right to engage in political speech, and the use of a living person’s name in a trademark can be a form of political speech.[17] Here, the trademark “Trump Too Small” is intended to criticize former President Donald Trump. A ruling that § 1052(c) cannot be used to deny trademark registrations for marks that contain criticism of government officials or public figures would be a victory for free speech: it would further expand the rights of activists and everyday people to voice their opinions of political officials through registration of various trademarks using political speech.
Right of Publicity
The right of publicity is a legal right that protects individuals from the unauthorized commercial use of their name, image, or likeness.[18] The right of publicity is often used by celebrities to prevent businesses from using their name or image in advertising or to sell products without their consent.
A ruling in favor of Elster could have a negative impact on the right of publicity. This decision could be interpreted to mean that the right of publicity does not apply to the use of a person’s name in a trademark, even if the use is commercial, adding more uncertainty to an already complex area of law. If the Court finds that § 1052(c) is unconstitutional, celebrities may face difficulty asserting right of publicity claims against businesses that use their name or image without their consent.
Conclusion
Despite the Court’s apparent inclination to rule in favor of Petitioner, it remains unclear exactly what its ruling will mean for marks like “Trump Too Small” moving forward.
I understand the sentiment from Elster that limiting his ability to trademark a phrase such as “Trump Too Small” violates his First Amendment right of political speech. Nonetheless, it is good public policy to allow people to capture common law rights for these marks while refusing registration of the mark with the USPTO when the mark violates § 1052(c). This would allow citizens to assert their First Amendment rights and protect their trademarks in commerce, without infringing upon settled trademark laws designed to protect individuals from unsupported use of their name. Furthermore, Elster’s argument that the statute limits negative content seems unpersuasive to the Justices. The statute is inherently neutral and does not attempt to determine whether the person might consent to the use of their name. Instead, the statute employs a simple requirement of written consent, regardless of the positive or negative connotation of the mark.
Whether or not Elster will receive registration for his mark is uncertain, however, the decision next spring will undoubtedly have massive ripple effects across the entire intellectual property landscape.
Featured image is from the website Trumptoosmall.com. (Trumptoosmall.com)
[1] Catherine Nyarady & Crystal Parker, Lanham Act’s Registration Requirements Head to the Supreme Court in Another First Amendment Challenge, New York Law Journal (Sept. 12, 2023, 12:00 PM),
[2] Id.
[3] Gary Blum & Griffin Perrault, Vidal v. Ester, Legal Information Institute, https://www.law.cornell.edu/supct/cert/22-704 (last visited Nov. 13, 2023).
[4] Id.
[5] Id.; see Matal v. Tam, 582 U.S. 218 (2017); see Iancu v. Brunetti, 139 S. Ct. 2294 (2019).
[6] Blum & Perrault, supra note 3.
[7] Ronald Mann, Court Likely To Reject “Trump Too Small” Trademark Claim, SCOTUSblog (Nov. 2, 2023, 12:57 PM), https://www.scotusblog.com/2023/11/court-likely-to-reject-trump-too-small-trademark-claim/.
[8] Id.
[9] Id.
[10]Patrick H.J. Hughes, Supreme Court’s ‘Trump’ Trademark Spat Evokes Right-Of-Publicity Concerns, WESTLAW TODAY: WESTLAW Intellectual Property Daily Briefing (Aug. 7, 2023), https://today.westlaw.com/Document/Ie512ce91354311ee8921fbef1a541940/View/FullText.html?contextData=(sc.Default)&transitionType=Default&firstPage=true.
[11] Id.
[12] Dennis Crouch & Samuel F. Ernst, Section 1052(c) of the Lanham Act: A First Amendment-Free Zone?, PATENTLYO (Dec. 12, 2021), https://patentlyo.com/patent/2021/12/section-lanham-amendment.html.
[13] Id.
[14] Id.
[15] Brief of Respondent at 35, Vidal v. Elster, No. 22-704 (S. Ct. Sept. 5, 2023).
[16] Id.
[17] Mills v. State of Ala., 384 U.S. 214 (1966).
[18] Right of Publicity, Int’l Trademark Ass’n, https://www.inta.org/topics/right-of-publicity/ (last visited Nov. 13, 2023).