Supreme Court to Decide Whether Refusal to Recognize Trademark Criticizing a Public Figure Violates the Free Speech Clause

Vidal v. Elster addresses the complex intersection between trademark registration and freedom of speech under the First Amendment.

Drawing upon a comment made by Senator Marco Rubio during a primary debate in 2018, Steve Elster sought federal registration for the trademark “TRUMP TOO SMALL” to use it on shirts.  The United States Patent and Trademark Office (USPTO) declined registration. It explained that using the name “TRUMP” in the proposed mark would likely be perceived by the public as a reference to former President Donald Trump. Registration was thus denied because it would infringe Section 1052(c) of the Lanham Act whose purpose is to safeguard rights of living individuals in designations that identify them, requiring their consent for such use.

Elster then appealed to the USPTO Board, which upheld the refusal of registration. It dismissed Elster’s argument that the refusal violated his First Amendment right to free speech, and reasoned that Section 1052(c) outlines criteria for trademark registration and is not a direct restriction on speech, applying regardless of the viewpoint expressed by the proposed mark. But the Federal Circuit took a different stance and reversed the decision. 

Before the Court, Vidal argued that Section 1052(c) is constitutional on its face and as-applied because it is undisputedly viewpoint-neutral. Vidal further argued that Section 1052(c) is consistent with the First Amendment’s free speech clause because registering a trademark is a government benefit that is not subject to the heightened scrutiny commonly applied to restrictions on speech. When a trademark is denied, the government is withholding a benefit, rather than restricting speech.  Because heightened scrutiny should not apply in that circumstance, the question is whether Congress acted reasonably in denying trademark registration to marks which designate living individuals unless the individual gives consent. According to Vidal, Congress acted reasonably since the use of an individual’s name in commerce without his or her consent has been historically viewed as commercial appropriation.

Elster argued that Section 1052(c), on its face, imposes content-based and speaker-based restrictions on speech, triggering at least intermediate scrutiny under the First Amendment. The statute protects against “prostituting great names” like the President on “all kinds of goods,” which Congress found distasteful. And the practical effect is suppression of unwanted or offensive speech against public figures. Elster further argued that Section 1052(c) cannot survive intermediate scrutiny because the government cannot show a substantial interest in facilitating its enforcement to protect the right of publicity.

During oral argument, Justices Thomas and Alito questioned whether this case fits within the Court’s government-benefits precedent because generally those cases dealt with money, such as a grant. Similarly, Justices Gorsuch, Kavanaugh, Kagan, and Alito asked whether there was a way to rule in Vidal’s favor without deciding that trademark registration is a government benefit, such as looking to history and the common law. Justice Sotomayor preferred not to use labels such as government benefits or limited public forum, and instead felt that simply deciding what level of scrutiny applied, such as reasonable basis, was the proper inquiry.    

This case was argued on November 1, 2023. A decision is expected later in the term.  Stay tuned for Dykema’s client alert discussing the Court’s opinion.

For more information, please contact Chantel Febus, James Azadian, David Schenck, Theodore Seitz, Christopher Sakauye, McKenna Crisp, Monika Harris, or Puja Valera.