Supreme Court rejects “Trump Too Small” trademark

Opinion Analysis

The court on Thursday unanimously rejected an attempt to force the Patent and Trademark Office to accept the registration of “Trump Too Small” as a trademark for a T-shirt mocking the former president. Steve Elster had argued that the Lanham Act provision that directs the PTO to refuse to register any mark that identifies “a particular living person” violates his First Amendment rights. Although the justices fiercely debated his reasoning, all agreed that the First Amendment allows the PTO to refuse to register the mark.

All nine justices agreed on the basic framework of the analysis, which appears at the start in the lead opinion written by Justice Clarence Thomas. Writing in that portion of his opinion for six justices (all except Justices Elena Kagan, Sonia Sotomore, and Ketanji Brown Jackson), Thomas explained that the restriction is viewpoint-neutral but not content-neutral. As he observed, the justices “have twice concluded that trademark restrictions that discriminate on the basis of viewpoint violate the First Amendment.” The earlier restrictions were viewpoint-based because they “prohibited trademarks based on only one viewpoint, while permitting trademarks based on other viewpoints.” In contrast, the restriction approach here is neutral — Thomas pointed to the PTO’s denials of trademarks such as “Welcome President Biden,” “I Stump for Trump,” and “Obama Pajamas.” Having said that, Thomas explained that the restriction is still content-based, because it imposes restrictions based on the content of the trademark: “The name clause depends on the content of the proposed trademark — whether it contains a person’s name. If the trademark contains a person’s name, and the registrant does not have that person’s consent, the name clause bars registration.”

Recognizing that the judges Vidal vs. Elster In considering “for the first time” the “constitutionality of content-based – but viewpoint-neutral – trademark registrations,” Thomas offered his reasons for approving the statute. Specifically, Thomas based his decision on an account of the “history and tradition” of content-based trademark restrictions, a discussion that generally reflected a long tradition of prohibiting any individual from using trademarks to identify goods in commerce to prevent others from using their own names. For Thomas, that discussion was sufficient to establish that “the Name Clause has deep roots in our legal tradition.” Accordingly, he concluded, “the Name Clause is of a piece with a common-law tradition regarding the trademarking of names,” and so “(we) see no reason to disturb this longstanding tradition, which supports the restriction of the use of another’s name in a trademark.”

The separate opinions show little devotion to historical perspectives. First, Justice Brett Kavanaugh and Chief Justice John Roberts agreed with most of Thomas’s opinion, but Kavanaugh wrote a brief concurrence explaining that they were both open to the possibility that “a viewpoint-neutral, content-based trademark restriction could be constitutional even without such a historical pedigree.”

Second, and more pointedly, Justice Amy Coney Barrett (who was also joined by Sotomore, Kagan, and Jackson) wrote to clarify her position that it was “twice wrong” to argue that “history and tradition” alone “can decide the constitutionality of the Names Clause.” Her first point is that the majority’s history was wrong: “(T)he Court’s evidence (which is drawn from loosely related cases) … does not establish a historical analogy for the Names Clause.” Her second point was that the majority was wrong to rely solely on history. She faulted the majority for “failing to explain why a search for historical antecedents is the correct way to analyze the constitutional question.” Barrett instead preferred to adopt a principled First Amendment rule “that reflects the connection between content-based trademark registration restrictions and free speech.” Specifically, Barrett’s test would allow any restriction that is “reasonable in light of the trademark system’s purpose of facilitating source identification.” As applied to the Disputed Name Clause, Barrett argued that Congress’s general determination regarding the use of names in trademarks was a “clear judgment (of)” that “Congress is entitled to make …, particularly where close scrutiny does not apply.”

The most critical of the separate opinions was Sotomayor’s, joined by Kagan and Jackson. She began with a strong critique of the majority’s historical approach, characterizing Thomas’s selection of officials, which she discussed, as “equivalent to entering a crowded cocktail party and looking over everyone’s heads to find your friends.” Sotomayor pointed to the confusion that lower courts have had in applying the same analysis offered by Thomas. New York State Rifle and Pistol Association v. Bruen,

On the merits, Sotomayor found the Names Clause acceptable because it conditions a government benefit (trademark registration) on the content of speech. She points out that registration “merely provides additional benefits to trademark holders,” and that denying registration does nothing to prevent Elster from speaking or selling items containing the mark. Accordingly, she found that the provision is within the Court’s First Amendment precedents.

It was clear from the briefing and argument that there would be differences of opinion among the justices in this case, as there have been in previous cases considering the relationship between the First Amendment and trademark law. My guess is that very soon we will see another provision of the Lanham Act challenged, and there will be differences of opinion among the justices just as there were on Thursday.