The Crossroads of Free Speech and Trademarks

Former President Trump is making the news again but this time for reasons only IP attorneys really care about.

On November 1, 2023, the U.S. Supreme Court heard arguments in Vidal v. Elster and they made it pretty clear that trademarking a living person's name will require their consent until the statute changes. Elster is attempting to trademark the term "TRUMP TOO SMALL" for t-shirts and other apparel. After losing at the Trademark Trial and Appeal Board level, the Federal Circuit found the relevant Lanham Act provision unconstitutional. Enter the Supreme Court.

First, the statute at issue. 15 U.S.C. §1052 provides:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

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(c) Consists 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.

The statute is relatively straightforward: Are they alive? If yes, you must get written consent. Are they dead? Go for it unless it is a former President of the United States.

After having his mark rejected by the USPTO, Elster claimed that the statute in question was unconstitutional on First Amendment grounds, i.e. the government was abridging his speech. Elster based his claims on two recent Supreme Court cases finding other sections of the Lanham Act unconstitutional; one refusing registrations for disparagement and one refusing registrations for immoral or scandalous marks.

This time, however, the Supreme Court does not seem on board with the invalidation of this particular statutory provision. At the heart of the issue is whether the provision is based on a particular viewpoint that the government is silencing. This makes sense as the basis for invalidating disparagement and scandalous marks. Not so much when the basis is essentially neutral about the individual. If the statute differentiated on the basis of American citizenship or ethnicity it might be a closer question.

Elster made an interesting point in his argument in that by allowing this provision to remain in place, the Court is essentially allowing living individuals to let marks through that they approve and not negatively charged marks. This is viewpoint discrimination (according to Elster) because dividing marks by positive versus negative messages is limiting speech critical of public figures which is not a legitimate public interest.

The Supreme Court during arguments had a variety of takes as to why the statute is valid but overall seemed to be on the same page as to the ultimate conclusion that the statute is valid. How they eventually end up will be an interesting window into their First Amendment thoughts. Will the originalists win out? Will it be based on Elster's ability to keep selling shirts? Or will it simply be a viewpoint neutrality analysis? My bet is that the simplest solution will win out saying the provision is valid but with a severely fractured Court as evidenced by the recent First Amendment cases with multiple concurring opinions.

What do you think?

Is 15 U.S.C. §1052 unconstitutional?

• Yes
• No