‘Trump Too Small’ Trademark Case Morphs Into Free Speech Debate

The US Supreme Court’s June 13 decision in the “Trump Too Small” trademark case revealed a potential rift among the justices on First Amendment jurisprudence but did little to advance intellectual property law.

Steve Elster wanted to register “Trump Too Small” as a trademark for shirts and hats but didn’t have the consent of former president Donald Trump. US trademark law prohibits registration of a trademark incorporating a name “identifying a particular living individual except by his written consent,” and so Elster’s application was refused. Elster claimed the prohibition improperly restricted speech and thus violated the First Amendment.

The Supreme Court, unsurprisingly to anyone following the case, rejected Elster’s argument and held that the provision (what it referred to as the “names clause”) was constitutional. But the various opinions in Vidal v. Elster turned out to be less about trademark law and more about the justices’ diverging approaches to First Amendment analysis.

The justices did agree on some things. They all agreed the names clause regulated content but not viewpoint, so the court’s prior decisions in Matal v. Tam and Iancu v. Brunetti, striking down other provisions of federal trademark law as impermissibly viewpoint-based, weren’t applicable here.

And they all seemed to agree that even though content-based regulations of speech are typically subject to a high level of scrutiny, that shouldn’t be the case here. Trademark law, after all, regulates speech based on its content. If the names clause were subject to a high level of scrutiny, the justices seemed to be saying, all of trademark law would be.

So with the court’s more relaxed approach, the question then became: How do we know when a trademark law is, in fact, a First Amendment problem?

According to the majority, in an opinion by Justice Clarence Thomas, the names clause wasn’t a First Amendment problem because courts in several older cases, mostly from the late 1800s, barred the registration of personal names as trademarks, “grounded in the notion that a person has ownership over his own name.” And this “history and tradition”—not, the majority seemed to imply, an application of the principles arising from those cases—were enough in this “relatively simple case” to establish that the names clause didn’t violate the First Amendment.

Justices Amy Coney Barrett, Ketanji Brown Jackson, Elena Kagan, and Sonia Sotomayor agreed that the names clause was constitutional but pushed back strongly on the majority’s history tourism, advancing instead a framework focused on trademark law’s purpose.

Trademark law, the Supreme Court has said in prior cases, is primarily about two goals: preventing confusion among consumers by ensuring accurate source identification and preserving trademark owners’ reputation and goodwill. For these justices, the names clause passed muster because prohibiting the registration of personal names without consent was self-evidently reasonable in light of these purposes; no further analysis was required.

In the end, the once-over-lightly approach of all the opinions in the case treated the statute at issue as barely worth mentioning. The justices only gestured at what seems to be the motivation for the names clause: the belief that people have property rights in their names. (Note, for example, that the text of the names clause appears to permit registration when the individual whose name is being used has consented to registration, regardless if they are the source of the goods or service with which the trademark will be used.)

The characterization of the names clause as furthering an interest in preventing consumer confusion might have come as a surprise to the US Patent and Trademark Office, which explains the name clause’s prohibition by stating that individuals “have a right to privacy and a right to control how their name, likeness, and identity is used.” Whether protecting these rights is an appropriate goal of trademark law was left unresolved by the court.

The fact that a true analysis of the names clause never really surfaced in the debate between “history and tradition” and doctrinal goals ultimately suggests the takeaway from this opinion isn’t about trademark law but about a developing split among the justices on how to conduct a First Amendment analysis.

What that means for intellectual property law—or for speech regulation more generally—will have to await another case.

The case is Vidal v. Elster, US, No. 22–704, 6/13/24.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

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Laura A. Heymann teaches and writes on copyright law and trademark law, among other topics, at William & Mary Law School.

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