Assessing the Arguments: Practitioners Predict Likely Loss for TRUMP TOO SMALL Applicant

Oral arguments were held yesterday in Vidal v. Elster, with most observers concluding that the justices are unlikely to grant trademark applicant Steve Elster’s bid to register the mark TRUMP TOO SMALL for t-shirts. Unlike the Court’s recent prominent trademark decisions in Matal v. Tam and Iancu v. Brunetti, there seemed to be little controversy on the part of the justices in Vidal v. Elster over whether the First Amendment is implicated here.

Below is a roundup of comments from trademark practitioners on what they thought stood out during the oral arguments.

David Bell, Haynes and Boone, LLP

“The Supreme Court implied during oral arguments that it favors the government’s position and thus is likely to leave Lanham Act Section 2(c) intact.

The Court did not seem to wrestle significantly with trying to reconcile the Matal v. Tam and Iancu v. Brunetti holdings with the Court’s take on Section 2(c). The justices contrasted those as involving  viewpoint discrimination, whereas it appeared to accept the government’s position that 2(c) is only content discriminatory (if even that). Elster’s counsel was asked about any data on whether 2(c) refusals disfavor critical messages over complimentary ones, but he acknowledged that he had none to provide.

The Court additionally cast doubt on whether a registration refusal actually provides for greater expression rather than hinders it. Elster’s counsel was asked why a registration does not, in fact, restrict the expression of people other than the mark owner, as a registration provides an owner certain exclusivity rights. He did not present a persuasive response in reply.

Notably, the Court focused on whether a federal trademark registration even impacts free speech. Justice Sotomayor, in particular, questioned whether it is even necessary to conduct First Amendment analysis on Lanham Act Section 2(c), because, as she stated, no speech is being restrained by a refusal of a registration. The Court may use this case as an opportunity to opine – for the first time – that a registration is a government benefit and does not meaningfully impact speech. This might dissuade future serious challenges to Lanham Act bars.”

Ian Block, Neal Gerber Eisenberg

“Justice Gorsuch and others raised the point that there is a long historical tradition of restricting individuals’ names from being appropriated by others as trademarks, and that a number of content-based restrictions have long existed in the trademark statute to prevent registration of certain types of terms (such as geographic terms, merely descriptive attributes, personal names, etc.). It’s important to keep in mind that the doctrinal purpose of trademark law is not to promote free expression like copyright law; rather, trademark law is designed to facilitate commerce by enabling consumers to recognize the sources of goods. Marks that include the names of others without their consent can be misleading insofar as they can suggest an association or affiliation with the named individual that does not exist, which undermines the trust- and consistency-enhancing purpose in commerce that trademarks are meant to serve.”

Felicia Boyd, Norton Rose Fulbright

“The Court’s questions and comments show their skepticism, if not rejection, of the arguments advanced by petitioner Steve Elster. The Court’s questions suggest that they do not see any actual or theoretical restriction on free speech by the Lanham Act’s statutory consent requirement. Trademark users can continue to use trademarks which include the names of living individuals even without federal registration, and the Court foresaw potential problems with disputes to register competing marks which contained the names of political candidates.”

Jennifer Mauri, Michelman & Robinson

“Based on comments by the justices, the Court seems inclined to side with the USPTO by upholding the trademark office’s ability to refuse to register a trademark that identifies a living individual without that person’s consent. If so, the Court will be upholding the status quo. However, if the Court were to side with Elster, companies would not only have to consider the potential benefits of registering identifying marks that they are using or intend to use but also whether to defensively seek to register identifying marks that they would want to prevent others from using.”

Mike Nepple, Thompson Coburn

“From the arguments, it appears several justices are ready to find the ‘living individual’ statute is constitutional. Assuming the Court upholds the statute, a key question is how the Court decides the case.

Questions by Justices Thomas and Sotomayor suggest they believe the statute does not burden speech, but rather imposes a condition on the receipt of government benefits – such as a trademark registration – and thus the Court would likely apply a reasonableness or rational basis review. As Justice Thomas asked Elster’s counsel, ‘if your argument is that somehow your speech is being impeded, I think it would be good to know precisely how that … it is being impeded.’ When Elster’ counsel responded that speakers would limit their viewpoints to obtain the benefits of registration, Justice Sotomayor interrupted to say that was making her think ‘you’re just conceding the other sides’ point that this is a government benefit.’

Addressing the Court’s benefit opinions, Justice Kagan agreed that multiple Supreme Court cases decided the government can select who receives benefits so long as the decision is not based on the speaker’s viewpoint, but that Elster had not identified cases that, in the absence of viewpoint discrimination, required the government to grant a benefit.

Finally, Justice Gorsuch noted that the common law of trademarks had long allowed certain “content” restrictions. While likely not dispositive, the Justice said, “it’s pretty hard to argue that a tradition’s that’s been around … since the founding … is inconsistent with the First Amendment.”

Mark Simpson, Saul Ewing.

“The general tenor of the questioning was skepticism over the assertion by Elster that his free speech is being inhibited. The fundamental takeaway from the questioning seemed to be that allowing the USPTO to prevent registration of such a mark is not inhibiting political or ‘viewpoint-based’ speech, since it seemed to be agreed by all that Elster is free to make t-shirts bearing the slogan as long as he uses a different source identifier; he can use the slogan, he simply cannot prevent others from using the slogan using the benefit provided by trademark laws. The purpose of the trademark laws is to avoid consumer confusion as to source, and there is a rational basis for allowing a person to control the commercial use of their name. Elster is not being prevented from speaking, he is simply being prevented from getting the government benefit provided by trademark protection.

Justice Gorsuch suggested that we can just look at the history of trademark law, and the historical content-based restrictions on registration of the names of living persons, descriptive terms, and geographically descriptive names, to find that Congress can statutorily provide the same protection without being violative of the Constitution.

Justice Barrett raised what I thought was a most intriguing question, asking if Trump could register TRUMP TOO SMALL, which he would be eligible to do since he would be giving consent to the use of his own name, and thereby prevent Elster (and others) from selling T-shirts or signs bearing the phrase. Mr. Stewart, arguing on behalf of the USPTO, suggested that if Trump was actually using the mark in commerce as a source identifier, then he could, in fact do so, but that he could not properly register the mark simply to block others from using it – he would have to actually use it, or have bona fide intent to use it, in commerce.”

Fara Sunderji, Dorsey & Whitney

“Both the Government and the Applicant summarized their respective positions in three key points and welcomed questions. It was a lively and cordial debate with a little bit of laughter. The Court focused on a couple of key areas, including the implications for copyright law; if this statutory section is in fact viewpoint neutral or not; historical restrictions on trademarks and the proper level of scrutiny to be applied.

One of the most interesting exchanges was between Chief Justice Roberts and Applicant’s counsel about the government’s argument that a denial of a trademark registration is not a restriction of speech and in fact registrations themselves restrict speech. (As Justice Gorsuch later stated – trademarks are a monopoly). Roberts hypothesized that everyone would run to the Trademark Office to register ‘Trump Too’ this and ‘Trump Too’ that.

Roberts highlighted a flaw in Applicant’s argument that the speech ‘Trump Too Small’ is political (the basis for the First Amendment claims) and source identifying (the basis for the trademark application).

Roberts seemingly didn’t think he could have it both ways. Applicant conceded that there might be some chilling effect if a trademark registration was granted. Counsel suggested that Congress, however, could enact a new law to protect political speech from all these registrations. (Query whether such a law would prohibit this registration for ‘Trump Too Small’ or just the enforcement of it?) Counsel suggested, for example, there could be a political speech prohibition. This argument seemed to fail because counsel could not think of a way to make such a statute viewpoint neutral.”

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