A while back, I wrote about two big cases that involved an attempt to register trademarks that some people considered offensive or defamatory. The first involved “The Slants,” a band made up of Asian-American musicians who were deliberately attempting to take ownership of the derogatory term and create positive associations with it. The second case was to register “FUCT” for a clothing line. Despite struggles and setbacks, both cases ultimately won in the Supreme Court, with Justices essentially saying that First Amendment rights trumped Section 2(a) of the Lanham Act, which prohibited the registration of:
“…immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
There is more to that section, but those are the salient parts for the purposes of these cases.
All of this brings us to today, where the Supreme Court is again hearing a case that involves a mark that pits the First Amendment against the Lanham Act. This time, however, all signs point to the court siding with the Lanham Act.
Vidal v. Elster: A Potentially Huge Precedent for “TOO SMALL” Trump T-shirt
The case in question began when Steve Elster sought to register a trademark for a t-shirt: “TRUMP TOO SMALL”. His application was denied by the USPTO on the grounds that it violates a different part of the Lanham Act – Section 2(c), which states that no one may register a mark that:
“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.”
Obviously, the mark in question is a reference to former President Trump, so the case would seem fairly cut and dried. Unless Mr. Elster received written permission from Mr. Trump to use Trump’s name in this way (he did not), the trademark cannot be registered.
Elster’s argument, though, is that the USPTO’s rejection should be reversed because Section 2(c) of the Lanham Act itself is unconstitutional, since it is in direct opposition to his right to criticize a political figure.
Justices, however, do not seem to be buying that argument.
“The Government’s Not Telling Him He Can’t Use the Phrase”
The quote is from Justice Sotomayor, who essentially said that preventing something from being registered as a trademark is not the same as curtailing free speech. “He can sell…shirts with this saying…anywhere he wants.”
Justices Gorsuch and Kavanaugh made arguments related to the long historical precedent of barring marks that use the names of specific living people or places. And Justice Kagan pointed out that she does not believe the statute is unconstitutional, because it is not about allowing or restricting a particular viewpoint – rather, it pertains to obtaining the consent of the individual in question.
What Does This Mean for Future Cases Pitting the Lanham Act against the First Amendment?
That probably depends on which part of the Lanham Act the mark in question relates to. In the earlier cases, the issue at hand was about whether or not something could receive a trademark registrationif it could be construed as offensive or defamatory in general.
Twice in a short period of time, the court found that such marks should be allowed to register.
This case, however, hinges on a trademark that directly uses the very recognizable name of a living person. The question is not what that mark is saying about the individual in question – but that Elster is trying to register the individual’s name as part of a trademark registration without that person’s written consent.
For once in recent memory, this is an issue that the Supreme Court seems quite united on: this kind of mark cannot be registered as a trademark without the person’s consent.