The Supreme Court recently rejected federal trademark protection for the mark "TRUMP TOO SMALL" based on the Lanham Act's Names Clause under Trademark Act Section 2(c), 15 U.S.C. §1052(c).
Background
In Vidal v. Elster,1 Steve Elster applied to register TRUMP TOO SMALL for clothing-related goods at the United States Patent and Trademark Office (USPTO). The USPTO rejected his application based on Trademark Act Section 2(c) which bars registration of an applied-for mark that consists of or comprises a name, portrait, or signature identifying a particular individual without that individual's written consent. See 15 U.S.C §1052(c). For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because: "(1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used." Elster appealed the USPTO's decision and later filed a lawsuit against the USPTO arguing that its application of the Names Clause to his application violated his right of freedom of speech under the First Amendment of the U.S. Constitution. In 2022, the Court of Appeals for the Federal Circuit agreed with Elster and reversed the USPTO's decision. The Government subsequently appealed the Federal Circuit decision to the Supreme Court where the Federal Circuit was overruled, the Supreme Court unanimously agreeing with the USPTO's decision.
USPTO's Standards
Because the applied-for mark contains the term "TRUMP" it arguably identifies former U.S. President Donald Trump. In view of this, USPTO found that the purchasing public would reasonably presume a connection between Donald Trump and the goods specified in the application. Under the Names Clause, the trademark applicant is required to provide the relevant individual's written consent to use its name or likeness in a federal trademark registration. According to the USPTO's records, Donald Trump did not give written consent to Elster to use his name, so the trademark application for TRUMP TOO SMALL was refused registration.
Constitutional Background
The Lanham Act prohibits trademark registrations that include a living person's name without that person's consent. 15 U.S.C. § 1052(c). Because the First Amendment prohibits any restriction of speech based on its content or viewpoint, the Lanham Act's Names Clause and the First Amendment may appear to contradict or conflict with each other. However, the Supreme Court noted that the Names Clause is content-based but viewpoint-neutral because it focuses on whether a trademark uses a person's name rather than the message or viewpoint conveyed by the mark. In this context, the Supreme Court concluded that the Names Clause does not violate the First Amendment.
The Supreme Court's Position
Associate Justice Clarence Thomas wrote that the Names Clause restriction is viewpoint-neutral but not content-neutral. Justice Thomas explained that "the names clause turns on the content of the proposed trademark — whether it contains a person's name. If the trademark does contain a person's name, and the registrant lacks that person's consent, then the names clause prohibits registration." While Justice Thomas relied on the "history and tradition" of the Names Clause to reach his decision, other members of the Court criticized his historical approach. For example, Associate Justice Sotomayer separately wrote that Justice Thomas' reliance on historical cases to reach the majority decision was "the equivalent of entering a crowded cocktail party and looking over everyone's heads to find your friends." Instead, Justice Sotomayer discussed a more direct approach to the Names Clause.
On the merits, Sotomayor supported application of the Names Clause in this case because it simply withholds the benefit of federal trademark registration based on the content of the speech. She explains that federal registration "only confers additional benefits on trademark holders," and that refusal to register a trademark does not prevent trademark owners from using the trademark or selling goods and services in connection with the same. It also does not prevent Elster from communicating his message and using his preferred mode of expression. As such, Sotomayor found that the Names Clause did not violate Elster's First Amendment rights.
While the Supreme Court jurists may have differed in their reasoning, they ultimately agreed that the Lanham Act's Names Clause restrictions on the use of a living individual's name in trademarks are permissible under the First Amendment if they are viewpoint-neutral and reasonably serve the trademark system's purposes. Nevertheless, the Supreme Court further clarified that the ruling applied to the Names Clause only and did not set a broader precedent for all content-based trademark restrictions.
Advice For Brand Owners
In general, brand owners should use caution when choosing names of living persons for their brands. In view of the Supreme Court's opinion to uphold the Names Clause, if you plan to use an individual's name or likeness in a trademark, you must have the person's written consent and it must be submitted with your trademark application at the USPTO. Additionally, even if you do not plan to register a trademark using an individual's name at the USPTO, use of the relevant trademark may attract unwanted attention from the name owner. This could lead to other legal issues not covered in this article.
Footnote
1. 602 U.S. 286 (2024).
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