By Eric Fram
One of the core principles of trademark law is that trademarks symbolize the reputation of their owners. Courts have therefore found that “a party has no first Amendment right to piggyback off the goodwill another entity has built in its name.” This principle is not limited to brand names and product labels, and, in fact, individuals can register their own names as trademarks or service marks if they offer goods or services under their names. With its recent decision in Vidal v. Elster, the Supreme Court reaffirmed that the “connection between a trademark and reputation is even stronger when the mark contains a person’s name.”
At the 2016 GOP debate, then presidential hopeful Donald Trump grabbed headlines when he seemed to defend the size of his genitals. Struck by the impropriety of this discussion on a national stage, California employment attorney Steve Elster created and distributed shirts bearing the phrase “TRUMP TOO SMALL.” In 2018, he applied to register the phrase as a trademark, but the US Trademark Office denied registration, citing the “Names Clause” of the Lanham Act, the US’s main federal trademark statute, against the use of the name “Trump” in the mark. The Names Clause bars registration of trademarks that “[c]onsist[] of or comprise[] a name, portrait, or signature identifying a particular living individual except by his written consent.” Elster challenged the refusal up to the Supreme Court, asserting that the Names Clause violated his First Amendment right to free speech.
In just the last few years, the Supreme Court struck down two provisions of the Lanham Act on First Amendment grounds, but with its decision in Vidal, it broke this streak, holding that the Names Clause was constitutional, and upholding the Trademark Office’s refusal to register the TRUMP TOO SMALL mark. In the other two decisions, the Supreme Court found that provisions of the Lanham Act which, respectively, barred registration of offensive and scandalous marks discriminated on the basis of viewpoint in violation of the First Amendment to the Constitution. Specifically, the Court found that these provisions prohibited trademarks that expressed viewpoints that may be considered offensive or derogatory on the one hand, or immoral or scandalous on the other, while allowing trademarks that expressed other, inoffensive or uncontroversial viewpoints.
Here, in contrast, the Court said that the Names Clause was “viewpoint-neutral”—any mark containing the name of a living person would be prohibited regardless of the viewpoint expressed by the mark. As the Supreme Court pointed out, the Trademark Office applied the Names Clause to deny registration not only of TRUMP TOO SMALL but also of marks such as I STUMP FOR TRUMP and WELCOME PRESIDENT BIDEN. The common objection was not that these marks expressed particular viewpoints but simply that they contained the names of living individuals who had not granted permission to register marks containing their names.
In practical terms, it is still the case that only an individual can register a trademark in their own name. Accordingly, those seeking to register trademarks must avoid including the names of living individuals in their marks unless they have prior written permission to do so. However, it is worth noting that the Supreme Court’s decision addressed only the narrow issue of registration of the mark, and not of use. Therefore, Elster is free to continue producing shirts featuring Trump’s name, even in the absence of a trademark registration.