First Amendment and trademark registration: Vidal v. Elster argument preview

For the fourth time since 2017, the Supreme Court of the United States considers how the First Amendment and the Lanham Act interact. In two of those cases--Matal v. Tam 582 U.S. 218 (2017) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019)--the Court invalidated restrictions on trademark registration as unconstitutional viewpoint discrimination. In another--Jack Daniels v. VIP Products, 599 U.S. 140 (2023)--the Court avoided the constitutional question.

Now, the Court considers whether the First Amendment forbids Congress from refusing trademark registrations seeking to use Donald J. Trump's name without his consent. Although Elster's constitutional challenge is only as-applied, the decision could impact applications to register names of any living individual.

The Dispute

Steve Elster wants to register his trademark--TRUMP TOO SMALL--on the Trademark Register for use on shirts and hats. According to him, the "mark criticizes Trump by using a double entendre, invoking a widely publicized exchange from a 2016 Republican primary debate in which Trump commented about his anatomy, while also expressing Elster's view about the smallness of Donald Trump's overall approach to governing."

The Trademark Office refused registration in part because the mark uses former president Trump's name without his consent.

The Law

In the United States, trademark rights develop from use. Unlike a patent, it is not a monopoly granted by the government. And unlike a copyright, registration is not required before bringing suit.

The federal government (and many states) allow registration of trademarks and provide certain legal advantages to owners of registered marks. But registration is separate from mark ownership. A helpful analogy comes from my friend (and noted trademark expert) Jane Shay Wald: A birth certificate may be a government recognition of a baby, but it didn't give life to the child. Trademarks have life the same way -- whether they're registered or not.

In Tam and Brunetti, the Court held that the Lanham Act's registration system could run afoul of the First Amendment. Prior to those decisions, the Trademark Office could refuse registration to immoral, scandalous, or disparaging marks.

The Tam Court addressed whether Congress could prohibit registration of disparaging marks. It held that "[t]rademarks are private, not government, speech," and therefore, enjoy the protection of the First Amendment. But the Court split 4-4 on the test to apply. Justice Alito (joined by Chief Justice Roberts and Justices Thomas and Breyer) argued that even under Central Hudson's intermediate scrutiny, the Lanham Act's viewpoint discrimination could not pass constitutional muster. Justice Kennedy (joined by Justices Ginsburg, Sotomayor, and Kagan) would have concluded that heightened scrutiny applied -- even if the speech was commercial.

In Brunetti, the Court took up whether Congress could prohibit registration of "immoral" or "scandalous" marks. The Court held those prohibitions were unconstitutional viewpoint discrimination, in a majority decision. However, Chief Justice Roberts, Justice Sotomayor, and Justice Breyer (in separate opinions) dissented in part. Everyone agreed that prohibiting "immoral" registrations violated the Constitution. But Roberts, Sotomayor, and Breyer would have held differently for "scandalous." Applying a limiting construction to save the provision, they would have held that viewpoint-neutral content discrimination was permissible in a federal system of trademark registrations, which is (according to Justice Sotomayor) "in essence, an opportunity to include one's trademark on a list and thereby secure the ancillary benefits that come with registration." And as the Chief Justice put it: "The First Amendment protects the freedom of speech, it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression."

Arguments at the Court

The parties agree on the core First Amendment principles. But they disagree on how best to characterize the trademark registration system.

The government conceives of the federal trademark registration system as a condition on government benefits. Because registration is not required to own or enforce a mark, it does not restrict speech. Instead, federal registration is a benefit Congress bestows on some trademarks, and it has broad latitude to limit the availability of those government benefits through viewpoint-neutral registration criteria. Using someone else's name for your own commercial benefit is classic commercial appropriation. Even if it can serve as a trademark, the government may reasonably decline to reward or associate itself with that appropriation. And because registration provides certain enhancements to enforcement efforts, the "anomalous effect" of forcing registration "is to vest respondent with a First Amendment right to prevent others from speaking and to obtain the government's assistance in that endeavor." Because Tam and Brunetti involved viewpoint discrimination, they have little impact here.

Elster disagrees with the government's view that the trademark registration system is a condition on government benefits. According to him, Tam noted that refusal to register imposes a "First Amendment burden" on speech, which requires heightened scrutiny. As the government fails to satisfy (or even argue) intermediate scrutiny, on this understanding the provision would be unconstitutional. He also sees less daylight between this case and the Court's prior cases. In particular, he emphasizes that the congressional purpose of this provision was linked directly--by the bill's authors--with the provisions invalidated by Tam and Brunetti. According to Elster, the provision disadvantages content, is speaker-based, and "verges on viewpoint discrimination"--and therefore is subject to heightened First Amendment scrutiny.

Listening In

The Court did not characterize the broader trademark registration system in Tam and Brunetti; it only addressed the narrow provisions. But here, how the justices characterize the system will greatly influence the outcome. So, while the case is an as-applied challenge, it will be closely watched for its broader impact.

The argument is set for Wednesday, Nov. 1, at 10 a.m. ET. Since the pandemic, Supreme Court arguments have been live-streamed at https://www.supremecourt.gov/oral_arguments/live.aspx.