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The Supreme Court in Vidal v. Elster (2024) upheld the "names clause" of trademark law, saying it did not violate free speech protections in the First Amendment. The case started after the trademark office rejected Steve Elster's trademark application for "Trump too small" because he didn't have consent by Trump to use his name. Elster got the idea to trademark the phrase after watching a 2016 debate in between Republican presidential candidates Donald Trump and Marco Rubio. Rubio had joked about Trump having “small hands” — suggesting that another part of him was small, too. Trump swung back by saying, “I guarantee you there’s no problem.” (AP Photo/Wilfredo Lee)

In Vidal v. Elster (2024), the U.S. Supreme Court upheld the names clause of the Lanham Act trademark law, finding that it did not violate the First Amendment.  The Court thus ruled that the Patent and Trademark Office correctly denied the trademark application of Steve Elster, who sought to trademark the phrase “Trump too small.” 

Elster sought the trademark after witnessing a 2016 presidential campaign exchange between Republican candidates Donald Trump and Marco Rubio.   The trademark office denied the request, citing the following provision of the Lanham Act that prohibits the registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.”

Trademark application for phrase 'Trump too small' sparks case

Elster appealed to the Federal Circuit Court of Appeals, which reversed and found that the names clause violated the First Amendment.  However, on further appeal, the U.S. Supreme Court unanimously reversed the Federal Circuit and upheld the names clause.  

Writing for the Court, Justice Clarence Thomas explained that the names clause — unlike the anti-disparagement provision in Matal v. Tam (2017) or the immoral or scandalous clause in Iancu v. Brunetti  (2019) — did not discriminate on the basis of viewpoint.  However, Thomas explained that the names clause was content-based, as it restricts certain speech based on content. 

Even though the names clause is content-based, Thomas said it should not be subjected to strict scrutiny review like most other content-based restrictions on speech because trademarks are different.  “The content-based nature of trademark protection is compelled by the historical rationales of trademark law,” Thomas wrote. 

Justice Thomas used tradition analysis to uphold 'names clause'

Thomas then turned to history and tradition, finding that the Lanham Act’s names clause has “deep roots in our legal tradition.”   He added that a “party has no First Amendment right to piggyback off the goodwill another entity has built in its name.”  He concluded that “a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition.” 

He added that the decision was “narrow” and that “[w]e do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional.” 

Other justices upheld 'names clause' under reasonableness 

Justice Brett Kavanaugh authored a very short concurring opinion, noting that “a viewpoint- neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree.” 

Justice Amy Coney Barrett wrote a concurring opinion.  She agreed that the names clause did not violate the First Amendment but disagreed with Justice Thomas’ history and tradition analysis.  Instead, her proposed standard was that such viewpoint-neutral, content-based trademark restrictions are “permissible so long as they are reasonable in light of the trademark system’s purpose of facilitating source identification.”  

She concluded: “Trademark protection cannot exist without content discrimination. So long as content-based registration restrictions reasonably relate to the purposes of the trademark system, they are constitutional.” 

Justice Sonia Sotomayor authored a concurring opinion, offering yet another analytical roadmap to reaching the same result. “This Court has held in a variety of contexts that withholding benefits for content-based, viewpoint-neutral reasons does not violate the Free Speech Clause when the applied criteria are reasonable and the scheme is necessarily content based,” she wrote. 

David L. Hudson Jr. is a law professor at Belmont University's College of Law and has written extensively on the First Amendment.

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