Part II: Elster Oral Arguments and Beyond

Written by Grace Wickstrom

The Supreme Court heard oral arguments for Elster’s case on November 1, 2023. [1] It appears that the Justices generally agree with Deputy Solicitor General Malcolm Stewart’s assertion that Section 2(c) is constitutional. [2] Yet, the Justices may not agree with Stewart or each other on how to reach this conclusion. [3] Two main lines of reasoning emerge from the Justices’ questions: (1) a return to the first principles of First Amendment issues [4] ; and (2) a call for the court to look to historical tradition to figure out whether there is a First Amendment liberty at stake here. [5] Both lines of reasoning contain a similar undercurrent sweeping away the constrained, categorical approach to First Amendment infringement seen in Tam and Brunetti.

Moreover, the difference between Tam and Elster’s marks may offer insight into why the Court’s willingness to strike down a section of the Lanham Act as unconstitutional seemed reasonable in Tam but untenable in follow-on cases. [6] This difference has more to do with underlying doctrinal and normative principles of trademark law than the First Amendment. Elster’s mark struggles to function as a mark and, in doing so, potentially precludes others from adopting similar marks to express similar sentiments. This becomes clearer when viewing the First Amendment issues raised by Elster’s mark through normative principles of trademark and unfair competition. Therefore, the Court should adopt a balancing test like Justice Breyer suggested in Brunetti. [7] In doing so, the specific empirical and normative trademark principles behind the Lanham Act section in question should be weighed against possible First Amendment concerns. [8]

Supreme Court Oral Argument:

During the Elster oral arguments, Stewart argued the U.S. trademark registration system qualifies as a government subsidy or limited public forum in which the government may impose restrictions on a party’s speech adhering to the categorical approach set out in Tam. [9] While the more conservative members of the court pushed back on finding the trademarked regime as a government benefit, it appeared a few Justices might be open to viewing trademark registration as a limited public forum or simply applying a rational basis standard. [10] Still, the Justices’ questions about First Amendment categories allude to possible apprehension, across the bench, about relying on these categories.

Simplifying the Approach:

Justice Sotomayor made a point of bringing the discussion of First Amendment infringement back to a dispositive question: Is there an abridgment of Elster’s speech? [11] Here, she found the answer to be no. [12] Even without a registration, Elster can still sell his shirt with TRUMP TOO SMALL on it. The government does not bar him from using the phrase.[13] Therefore, there is no “traditional infringement” of the First Amendment and the Court should apply rational basis review. [14] Justice Sotomayor alludes to this conclusion by discarding the categorical approach set forth in Tam, stating, “I know it’s almost as if we’re becoming straitjacket — jacketed by labels instead of looking at this, as I do, from first principles.” [15] Stewart agreed with the Justices, stating his analogies to government subsidies and public forum doctrines are “illustrative of a general principle” that the government does not abridge a person’s right to free speech when it withholds its assistance to making speech. [16]

Justice Sotomayor’s reasoning and the solicitor general’s response highlight an underlying issue in applying Tam’s reasoning to find that Section 2(c)’s limitation on registration infringes on First Amendment rights. [17] In a way, the argument that registration denial impedes Elster’s speech and denies him the legal benefits of federal trademark registration is contradictory in nature. In fact, Justice Sotomayor explicitly calls out the respondent attorney’s argument as a confession that registration is a government benefit. [18] If this issue involves speech, Justice Sotomayor did not seem interested in perfecting an analogy of trademark registration to a government subsidy or limited public forum. [19] Justice Kagan seemed to agree that the two are at least related. [20] Instead, the focus should turn to whether the registration limitation is “reasonable in this context.” [21]

A Historical Approach to Trademark Rights to One’s Own Name:

            A few Justices, aligning with an originalist view of constitutional law, sought to apply a historical approach to the constitutionality of Section 2(c). Justice Gorsuch led the way in Oral arguments calling attention to a “robust history [of] restricting names” at common law except in the rare case there is secondary meaning. [22] Under Justice Gorsuch’s historical lens, the restriction of the use of names falls in line with content-based restrictions historically deemed not trademarkable: geographic names, descriptions, functions generally, there are always exceptions, but generally not trademarkable. [23] Justice Kavanaugh agreed that looking towards historical evidence to find if there is a First Amendment liberty at stake here is more appropriate than figuring out categorical justifications. [24] However, he did seem more comfortable with limited public forum doctrine than government benefit as a “doctrinal box” based on Tam and Brunetti. [25] Perhaps stating his stance more explicitly than his colleagues, Justice Alito openly admitted he is holding his ground on his reaction to the government benefits theory expressed in Tam. [26] It is clear Justice Alito most likely agrees with his colleagues’ historical tradition approach, as seen in his question about a person’s “quasi-property interest” in their own name. [27]

Not all commentators agree that a historical framing of Section 2(c) is the strongest line of reasoning or a viable one to rest the constitutionality of 2(c) on. The first record of federal statutory protection of a person’s exclusive use of their own name for goods and services was the Lanham Act. [28] The relatively brief history of the Lanham Act does not align with the conservative Justices’ usual approach to a history and traditions test. [29] Nevertheless, the limitation on the use of another’s name set out in Section 2(c) serves as a close proxy for a federal statute enforcing state publicity rights; which themselves trace back to a common law right of privacy. [30] Thus, the historical context of Section 2(c) strengthens the argument that there is no First Amendment liberty at stake in Elster’s case and expounds the normative principles of trademark law that distinguish Tam from Elster. In fact, the Elster mark’s ineligibility is more reasonably explained by its failure to function as a mark than under Section 2(c)’s limitations.

A Return to Doctrinal Principles of Trademark Law:

Over the years, the Court has struggled to state a clear test for determining if a section of the Lanham Act infringes First Amendment rights. The answer may lie in the doctrinal principles of trademark law instead of current First Amendment doctrinal categories. Examining the Tam and Elster cases, doctrinal differences may explain why the Court was more willing to cram the Tam case into First Amendment categories but hesitated in later cases. Moreover, examining Elster’s mark through the lens of doctrinal values of trademark law demonstrates that a balancing approach like that suggested by Breyer in Brunetti may be the most efficient approach to determining whether there is a First Amendment infringement moving forward.

‘Failure to Function’ and the Use of Surnames as Marks

While THE SLANTS and TRUMP TOO SMALL are expressive in their own way, there is a subtle difference in how each mark is expressive: Expressive value versus being expressive. This difference may be explained by each mark’s ability to function as a mark. THE SLANTS mark has expressive value and the ability to function as a mark. THE SLANTS is a powerful symbol for reclaiming words of oppression but is also a distinctive source identifier for a musical group. [31] When seen on band shirts, CDs, and posters, the mark can create a distinct commercial impression: A rebellious Asian American rock group. In comparison, Elster’s proposed mark may be expressive as it expresses his critiques of Donald Trump’s policy choices. However, TRUMP TOO SMALL does not serve as a source identifier like THE SLANTS could.

Though Elster’s mark does not consist only of the surname Trump, TRUMP TOO SMALL on the front of a t-shirt expresses sentiments for the former president, which dimmish its ability to act as a source identifier. [32] Phrases like Elster’s proposed mark have been used to express similar sentiments since the infamous presidential primary debate in 2016. [33] Recognizing the popularity of this reference, consumers would likely not trace the phrase back to Elster. [34] No third-party users of similar phrases do so to reference Elster, only Trump. If Elster’s mark has any commercial impression when seen by consumers on the front of shirts, it is because of President Trump’s name.

Therefore, the difficulty for Elster’s mark to function may be traced to the difficulty for surnames in general to function as marks. A few Justices mention the broader principle of restricting name marks in trademark law. [35] Generally, surnames cannot be inherently distinctive when used merely as a surname. [36] Therefore, they require secondary meaning to overcome the registration hurdle set out in Section 2(e)(4). [37] Here, it seems that the closest thing to secondary meaning the mark has acquired does not come from Elster’s efforts but from the public’s understanding of Trump as a political figure. Allowing Elster to gain federal registration of the mark incentivizes him to choose a mark that benefits from Trump’s ‘goodwill.’

Nevertheless, failure to function as a doctrinal area of trademark law has yet to be fully flushed out. While the assertions above are based on the existing case law, the question of what it means to use a mark or for a mark to function as a mark prominently plagues trademark law post-Abitron and Jack Daniels. [38] It becomes increasingly clear that use as a mark is central to the Court’s recent trademark decisions. If the Elster opinion dances around these imperative questions, future cases will provide the Court an opportunity to clear up murky waters of the “use as a trademark” doctrine. [39]

Fair Unfair Competition and Others’ First Amendment Rights

Beyond TRUMP TOO SMALL’s ability to function as a mark, how the proposed mark interacts with third-party First Amendment rights highlights important normative values of trademark protection. Justice Jackson expressed that trademark law is about “source identifying and preventing consumer confusion [,]” not expression and the First Amendment. [40] Yet saying consumer confusion is the end of the argument may simplify trademark law in a way that disregards major concerns for a mark’s impact on competitors’ ability to compete and First Amendment issues in restricting third-party use of a mark.

Trademark values like source identification prevent the registration of marks like TRUMP TOO SMALL from creating a chilling effect on other’s political speech. [41] Justice Roberts raises the concern that Elster, if given federal registered trademark rights, may be able to impede others’ ability to express similar sentiment. [42] Taylor attempted to dispel the issue of the mark’s chilling effect by explaining the doctrine of “failure to function” will act as a safety net for catching marks that overwhelmingly impede the political speech of others. [43] The issue is, as Roberts indicates, it is hard to imagine that failure to function can serve as a legitimate limitation if TRUMP TO SMALL passes the test. [44] Elster’s mark does not appear to serve as a source identifier, as discussed above.

Forgoing the issues of failure to function, Elster’s mark highlights why Trademark law cannot stop at source identification and consumer confusion. TRUMP TOO SMALL creates additional issues concerning First Amendment and Unfair Competition principles. Elster—or anyone else with a political mark like TRUMP TOO SMALL—may have a difficult time successfully enjoining the use of similar phrases due to either lack of confusion of source or potential First Amendment defenses. [45] Still, the potential threat of incurring the costs of a lawsuit may suppress political speech. [46] Allowing Elster to police the use of similar phrases on goods by competitors seems akin to letting a mark holder police others’ use of a generic term. [47] In other words, granting Elster trademark protection potentially creates a monopoly on using TRUMP TOO SMALL and similar phrases that others may want to use to express their political sentiment. Normative principles of trademark law limit the words a mark owner can trademark to assure competitors can effectively describe their products and compete in the marketplace. [48] In effect, those wishing to use a similar sentiment on a product would be unable to effectively portray their political speech. Thus, by limiting third-party expressive and competitive use of this phrase, the registration of Elster’s mark would go against normative principles of trademark law. [49]

Balancing Trademark Principles and First Amendment Interests

The difference in the mark’s ability to function expressed above, along with normative trademark rationale, provides a basis for determining if there is a possible First Amendment issue with a Lanham Act provision. First Amendment concerns appropriately arise when the USPTO denies registration of a mark under the following circumstances: (1) the mark functions as a mark ought to according to the Section 45 definition, but (2) the expressive value of their mark offends a Section 2 limit on registration which itself does not have a strong nexus to the normative purposes of trademark law. [50] In juxtaposition, a First Amendment concern is invalid when a mark is barred by a Section 2 limit, which imposes the qualities of a registerable mark defined in Section 45 or protects against unfair competition claims. Here, Section 2(c) falls into the latter category.

In light of these observations, it may be best for the Court to adopt a balancing test like the one expressed by Justice Breyer in Brunetti. [51] Breyer urged the Court to utilize the categories as “rules of thumbs” while balancing the proportionality of regulation’s speech-related harm to the “relevant regulatory objectives.” [52] Accordingly, the Court should weigh the specific empirical and normative principle of trademark law against possible First Amendment concerns for denying Elster’s mark under Section 2(c).

[1] See Generally Transcript of Oral Argument, Vidal v. Elster (2023) (No. 22-704).

[2] Id.

[3] Id.

[4] Id. at 20-22.

[5] E.g. Id. at 14 (Oral remarks by Justice Gorsuch, “…focus instead on history and what that informs us about use of names in this context, there’s a long historical tradition, right, of the living-person name, just as there is with geography and other things like that. There have always been content-based restrictions of some kind in this area. Is –is that enough for us to say, to resolve this case in your favor, or –or do we need to –I think what Justice Alito’s pressing at is, to rule in your favor, do we need to go down this government benefits route?”).

[6] Footnotes ( ) and accompanying text.

[7] Iancu v. Brunetti (Brunetti), 139 S. Ct. 2294, 2306-08 (U.S., 2019) (Breyer J. Concurrence).

[8] Footnotes () and accompanying text; Brunetti (Breyer J. Concurrence).

[9] Transcript of Oral Argument, Vidal v. Elster, 7-8, 18-20 (2023) (No. 22-704).

[10] Id. at 18, 22.

[11] Id. at 20.

[12] Id.

[13] Id. at 20-21.

[14] Id. at 21.

[15] Id. at 20-21.

[16] Id. at 22.

[17] Matal v. Tam (Tam), 582 U.S. 218, 244 (U.S., 2017).

[18] Transcript of Oral argument at 46, Vidal v. Elster.

[19] Id. at 21-22

[20] Id. at 49.

[21] Id. at 21 (“Now, to the extent that it might involve speech, one could analogize, but I don’t think you have to call it a government subsidy or call it a limited public forum. They both come out, both approaches come out, to what is reasonable in this context”).

[22] Id. at 56-57 (Common law, there’s a long and robust history about restricting names, Now sometimes they took on secondary meanings, like Brooks Brothers, all right, but that was pretty rare”).

[23] Id. at 14, 56-57.

[24] Id. at 55-56.

[25] Id. at 18.

[26] Id. at 29.

[27] Id. at 68. This question alludes to the traditional purpose Section 2(c) has in protecting state rights of publicity.

[28] § 22:34. Use of a natural person’s identity; the right of publicity, 6 Callmann on Unfair Comp., Tr. & Mono. § 22:34 (4th ed.).

[29] Rebecca Tushnet, What’s next for Elster?, Rebecca Tushnet’s 43(B)log (Nov. 3, 2023) [] (“no substantive federal TM until the Lanham Act; first attempt struck down as unconstitutional—a tradition that is younger than my parents is not usually the kind of tradition the Court’s current majority pays attention to”).

[30] § 22:34. Use of a natural person’s identity; the right of publicity, 6 Callmann on Unfair Comp., Tr. & Mono. § 22:34 (4th ed.)

[31] “I think, in that case, they had a real argument that to express themselves fully effectively, The Slants had to be the official name of their band. It wouldn’t be sufficient if they had adopted a more anodyne term as the official name and then had referred to themselves colloquially as Slants… And so, Tam was really the rare case which there was real expressive value in choosing a term as a source identifier rather than simply using it. ” Stewart

[32] See T.M.E.P. § 1202.04(b) (Nov. 2023 ed.) (“Matter that merely conveys ordinary, familiar, or generally understood concepts or sentiments, as well as social, political, religious, or similar informational messages in common use, would not be perceived as indicating source and thus is not registrable”); T.M.E.P. § 1202.04(b) (Nov. 2023 ed.)(citing In re Hulting, 107 USPQ2d at 1179)( “…the proposed mark NO MORE RINOS!, for various goods, including bumper stickers, signs, and t-shirts, was found not to function as a mark because the evidence showed that consumers were accustomed to seeing this well-known political slogan on these types of goods from a variety of different sources”)

[33] E.g., Political Cartoon U.S. Donald Trump small hands policy, Bob Gorrell, The Week, [] (Feb. 2, 2017); Tiny Trump Tiny Hands Funny Trump Meme Tshirt Classic T-Shirt, Artist Shot, [] (Visited Jan. 6, 2023).

[34] See  In Re Lizzo LLC, TTAB, Serial Nos. 88466264 and 88466281 at 34-36 (“But more importantly, considering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression”).

[35] Supra notes 22-27 and accompanying text.

[36] 15 U.S.C. § 1052(e)(4); See e.g. In re United Distillers.

[37] 15 U.S.C. § 1052(f).

[38] See generally Abitron Austria GmbH v. Hetronic International, Inc., 143 S.Ct. 2522 (U.S., 2023) (holding infringing “use in commerce” creates permissible application of Lanham Act); Jack Daniel’s Properties, Inc. v. VIP Products LLC, 143 S.Ct. 1578, 1579 (U.S., 2023) (holding the Rodgers test does not apply where a defendant is using the infringing mark as a trademark).

[39] E.g. Pennsylvania State University v. Vintage Brand, LLC, 614 F.Supp.3d 101 (M.D.Pa., 2022).

[40] Transcript of Oral argument at 53, Vidal v. Elster (“And trademark is not about expression. Trademark is not about the First Amendment and your –and –and people’s ability to speak. Trademark is about source identifying and preventing consumer confusion”).

[41] 88 Brook. L. Rev. 839, 842 (“…the speaker is often not only asserting the right to speak, but also to exclude others from saying the same thing.”).

[42] Transcript of Oral argument at 60, Vidal v. Elster.

[43] Id. at 61-62.

[44] Id. at 62.

[45] § 31:139. Balancing trademark enforcement with free speech principles, 6 McCarthy on Trademarks and Unfair Competition § 31:139 (5th ed.) (“There is no statutory or judge-created safe harbor or affirmative defense that can quickly or easily resolve trademark versus free speech conflicts. Without a bright-line affirmative defense, those who make legitimate free speech uses of the trademarks of others must argue that, after a balancing of the relevant factors, there is no likelihood of confusion. Faced with hugely expensive and lengthy litigation over vague standards, the recipient of a cease-and-desist letter will most often capitulate”).

[46] Id.

[47] § 12:2. The policy basis for the generic name rule, 2 McCarthy on Trademarks and Unfair Competition § 12:2 (5th ed.)

[48] § 12:2. The policy basis for the generic name rule, 2 McCarthy on Trademarks and Unfair Competition § 12:2 (5th ed.)(“Judge Friendly remarked that to permit exclusive trademark rights in a generic name “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are”).

[49] § 31:139. Balancing trademark enforcement with free speech principles, 6 McCarthy on Trademarks and Unfair Competition § 31:139 (5th ed.) (“Trademark rights promote the aims of the first amendment by enabling producers of the spoken and written word to differentiate themselves. If multiple businesses use the same (or confusingly similar) names, the result is cacophony rather than discussion or debate”).

[50] 15 U.S.C. § 1127 (“The term “trademark” includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown”).

[51] Brunetti, 139 S. Ct. at 2306.

[52] Id.