The US Supreme Court’s June 13 decision in the “Trump Too Small” trademark case underscored a potential rift among the justices regarding First Amendment jurisprudence, yet it contributed little to intellectual property law. This case, formally known as Vidal v. Elster, arose when Steve Elster sought to register “Trump Too Small” as a trademark for shirts and hats without 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,” leading to the denial of Elster’s application. Elster contended this prohibition unfairly restricted speech, thereby violating the First Amendment.
Predictably, the Supreme Court rejected Elster’s argument, upholding the provision—referred to as the “names clause”—as constitutional. However, the various opinions offered by the justices in this case diverged significantly on their approaches to First Amendment analysis. All the justices concurred that the names clause regulated content but not viewpoint, thus excluding the applicability of precedence set in Matal v. Tam and Iancu v. Brunetti, where other sub-sections of federal trademark law were struck down for being impermissibly viewpoint-based.
The Supreme Court’s consensus suggested that while content-based speech regulations typically face high scrutiny, this shouldn’t apply universally to trademark law, which inherently regulates speech based on content. The crux of the debate then shifted to discerning when a trademark law actually poses a First Amendment issue.
The majority opinion, authored by Justice Clarence Thomas, stated that the names clause did not present a First Amendment problem. This conclusion was buttressed by a historical perspective, pointing to late 1800s cases where courts barred the registration of personal names as trademarks on the notion of personal ownership of one’s name. Justices Amy Coney Barrett, Ketanji Brown Jackson, Elena Kagan, and Sonia Sotomayor, while agreeing on the clause’s constitutionality, pushed back on the historical analysis, emphasizing instead the purpose of trademark law.
Trademark law’s primary goals—preventing consumer confusion and protecting the reputation and goodwill of trademark owners—guided their reasoning. The names clause was deemed reasonable given these objectives, requiring no further analysis. The simplicity with which both majority and dissenting opinions addressed the names clause suggested the case was more about diverging views on First Amendment analysis than about trademark law.
The true motivation behind the names clause, however, remained somewhat nebulous. The US Patent and Trademark Office clarifies the clause’s rationale as protecting individual privacy and control over one’s name, likeness, and identity, as outlined in official guidance. The justices did not resolve whether these motivations align with appropriate goals of trademark law.
Ultimately, the disparate approaches taken by the justices highlight a brewing divide over how to balance historical precedent and doctrinal objectives in First Amendment cases. The broader implications for intellectual property law and speech regulation will, thus, await clarification through future litigation.