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Is “Trump Too Small” … Registrable? Understanding Trademarks and Free Speech

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The Supreme Court has taken on yet another case regarding the tension between the First Amendment and the federal government’s ability to limit what can be registered as a federal trademark. Read on for an explanation of what you should know about the Court’s anticipated ruling in Vidal v Elster and other recent cases addressing the constitutionality of restrictions on what can be registered as a trademark.

Lanham Act Provisions Held Unconstitutional

The federal trademark statute, known as the Lanham Act, contains a number of restrictions on what can be registered as a trademark. In recent years, the Supreme Court held that two such restrictions violated the First Amendment right to free speech.


In Matal v Tam, 582 U.S. 218 (2017), the Supreme Court held that the Lanham Act’s bar on the registration of “disparage[ing]” trademarks violated the First Amendment because it discriminated on the basis of viewpoint. As a result, Simon Tam, founder of a band named The Slants, was able to “reclaim” the pejorative term “slants” and register THE SLANTS as a trademark. (Check out our blog post for more on reclaimed marks.)


Similarly, in Iancu v Brunetti, 588 U.S. ___ (2019), the Supreme Court held that a provision of the Lanham Act barring “immoral or scandalous” marks was facially invalid because it barred registrations based on viewpoint, in violation of the First Amendment. As a result, Eric Brunetti was allowed to register FUCT as a trademark.

Elster’s Road to the Supreme Court

In 2018, Steve Elster applied to register “Trump Too Small” as a trademark. The United States Patent and Trademark Office (USPTO) denied the application on the grounds that it violated Section 2(c) of the Lanham Act because it identified a living individual who had not consented to the registration. Elster appealed to the Trademark Trial and Appeal Board (TTAB), which suspended the appeal at the examining attorney’s request. On remand, the examining attorney found the registration should also be denied under the Section 2(a) because it falsely suggested a connection with a living person. The TTAB affirmed the refusal on Section 2(c) grounds only. The Court of Appeals for the Federal Circuit reversed, finding that applying Section 2(c) to bar the registration unconstitutionally restricted Elster’s free speech. The court of appeals found Elster’s right to critique and comment on a living public figure was protected by the First Amendment and the government did not have a sufficient interest in limiting his speech. As Director of the USPTO, Katherine Vidal petitioned the Supreme Court to take the case.

What is Before the Court

The key issue in the case concerns whether Section 2(c) is a condition on a government benefit or a restriction on free speech – which impacts the appropriate level of review or scrutiny. The government argued the statute was enacted to protect the privacy and publicity rights of living people, that to maintain a trademark registration program the USPTO must be able to distinguish what is registrable from what is not, and that the use of content-based criteria is an “inherent and inescapable” part of any trademark-registration program. The government also argued that the purpose of trademark registration is to “enhance” the registrant’s ability to restrict others from using the mark, and only indirectly promotes the owner’s own use of the mark. Because it was a viewpoint neutral condition, not a restriction on speech, heightened scrutiny was unwarranted.

Elster argued that the government had no legitimate government interest in barring registration of marks depicting a living person. Heightened scrutiny was warranted because the statute disfavored speech based on its content: the statute’s purpose was speaker-based, allowing public figures to register positive trademarks while no one else can do so. The effect verged on viewpoint discrimination, since nobody would ever consent to registration of a mark that insults them. Elster also argued that Section 2(c) could not survive intermediate scrutiny or even satisfy a reasonableness standard.

Prominent voices in the intellectual property space submitted amicus briefs. The International Trademark Association (INTA) argued that Section 2(c) is constitutional because it does not create a significant or undue restriction on speech, is viewpoint neutral, serves a substantial government interest and actually promotes speech since Elster might use a registration to limit speech by others. INTA further argued that heightened scrutiny does not apply. The American Intellectual Property Law Association (AIPLA) argued that, as applied, Section 2(c) was unconstitutional because it imposed a condition that impaired Elster’s First Amendment rights. AIPLA agreed with the court of appeals that there was no substantial or compelling government interest justifying the regulation of speech.

The Court heard oral argument on November 1, 2023. An audio recording and transcript is available. While at least one commentator predicts the Court will uphold the statute, we will await the Court’s decision, which is expected in late Spring.

Feel free to contact us if you have questions, would like to discuss these issues or would like to join our mailing list.

nancy mertzel - partner of mertzel law pllc

Nancy J. Mertzel

Mertzel Law PLLC

1204 Broadway, 4th Floor, New York, NY, 10001

25 Pompton Avenue, Suite 101, Verona, NJ 07044

(646) 965-6900


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