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Trademarks and Free Speech - “Trump Too Small” Not Registrable

warner v nealy supreme court case

Earlier this month, the US Supreme Court delivered its ruling in the case of Vidal v. Elster. As discussed in our previous article, this case concerned whether the Federal Circuit below held correctly that Mr. Elster could register “Trump Too Small” under trademark law and free speech principles. Read on to learn about the impact of this decision on First Amendment principles and trademarks.

Brief background

Steve Elster sought to register the phrase “Trump Too Small” as a trademark for hats and shirts. Elster’s application was refused by the US Patent and Trademark Office (USPTO) under Section 2(c) of the Lanham Act, often referred to as the names clause. Section 2(c) states no trademark can be registered that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” In essence, the names clause prohibits registering as a trademark a living person’s name without that person’s consent. Elster argued that the names clause was an unfair restriction on his free speech. The issue before the Supreme Court was “whether the Lanham Act’s names clause violates the First Amendment.”

Tam and Brunetti: Viewpoint or Content Based Discrimination


In recent years, the Supreme Court has approached First Amendment challenges to trademark registration restrictions by considering whether the restriction on speech was viewpoint-based discrimination or content-based discrimination. Viewpoint-based restrictions on speech target the views held by the speakers and not merely the subject matter and can rarely survive a First Amendment challenge. A content-based restriction, which applies to particular speech because of the topic discussed regardless of the idea or message expressed, may satisfy the First Amendment.


In Matal v. Tam, the Supreme Court held that Lanham Act Section 2(a)’s prohibition on registration of “disparaging” trademarks violated the First Amendment. The Court held that Section 2(a)’s restriction was viewpoint-based discrimination because it was focused on preventing “offensive” marks. Two years later, in Brunetti, the Court similarly held that Section 2(a)’s restriction on “immoral and scandalous” marks also violated the First Amendment and was viewpoint-based discrimination.


In contrast, the majority in Vidal v. Elster, held that the names clause in Section 2(c) is viewpoint-neutral. While Elster’s mark critiqued Trump, applications for complimentary trademarks about Obama, Trump, and Biden were rejected by the USPTO because they contained those names without consent. Even when a trademark’s message is neutral or positive, a person is entitled to withhold consent for use of her name. Therefore, the names clause is a viewpoint-neutral content-based restriction.

The Majority’s Analysis

Justice Thomas announced the judgment of the Court with Justices Alito and Gorsuch joining in the opinion. The majority examined the historical rationale of content-based restrictions on trademarks and concluded that content-based restrictions are nothing new. Content-based restrictions in common law have dissuaded fraud and prevented customer confusion by enabling every person to use her own name for her goods and services. The majority argued that there is no evidence in common law that a person could trademark another living person’s name without consent, as Elster is attempting. The First Amendment right to free speech does not permit someone to steal the goodwill another entity has built up in its name. However, the majority opinion left open the issue of whether a viewpoint-neutral content-based regulation on trademarks could be constitutional without the historical precedence that the names clause has.

Splintering Views within the Court

The remaining six justices agreed with the conclusion that the names clause does not violate the First Amendment but issued concurring opinions with differing reasons. Justice Kavanaugh agreed that the names clause is constitutional but expressed his view that a viewpoint-neutral content-based trademark restriction like the names clause might be constitutional independent of the historical legacy.


Justice Barrett concurred in part, analogizing the content-based restriction on trademarks with the content-based restrictions on speech in a “limited public forum.” Barrett argued that content-based criteria for trademark registration does not violate the First Amendment so long as the criteria are reasonably related to the preservation of the trademark owner’s goodwill and the prevention of consumer confusion. The majority rejected Barrett’s limited public forum analogy as inapplicable on the grounds that trademarks do not create a public forum.


Justice Sotomayor concurred in the judgment but expressed disappointment with the majority’s application of a history-and-tradition test. Sotomayor argued for a framework in which a viewpoint-neutral restriction must be reasonable in light of the purpose of the trademark system. Sotomayor also stated that heightened scrutiny does not apply because federal trademark registration is a government benefit and does not burden speech. Withholding a trademark registration under Section 2(c)’s names clause does not impose a penalty because the names clause is viewpoint-neutral.

Key Takeaways

First, the names clause in Section 2(c) of the Lanham Act is still good law, demonstrating that not all Lanham Act prohibitions on the content of trademark registrations are unconstitutional.


Second, the Supreme Court’s jurisprudence regarding the history-and-tradition test continues to evolve, as demonstrated in its recent decision in United States v. Rahimi, concerning gun control and the Second Amendment.


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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