The Supreme Court heard oral arguments for Elster\u2019s case on November 1, 2023. [1] <\/a> It appears that the Justices generally agree with Deputy Solicitor General Malcolm Stewart\u2019s assertion that Section 2(c) is constitutional. [2] <\/a> Yet, the Justices may not agree with Stewart or each other on how to reach this conclusion. [3] <\/a> Two main lines of reasoning emerge from the Justices\u2019 questions: (1) a return to the first principles of First Amendment issues [4] <\/a>; 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] <\/a> Both lines of reasoning contain a similar undercurrent sweeping away the constrained, categorical approach to First Amendment infringement seen in Tam<\/em> and Brunetti<\/em>.<\/p>\n Moreover, the difference between Tam<\/em> and Elster\u2019s marks may offer insight into why the Court\u2019s willingness to strike down a section of the Lanham Act as unconstitutional seemed reasonable in Tam<\/em> but untenable in follow-on cases. [6] <\/a> This difference has more to do with underlying doctrinal and normative principles of trademark law than the First Amendment. Elster\u2019s 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\u2019s mark through normative principles of trademark and unfair competition. Therefore, the Court should adopt a balancing test like Justice Breyer suggested in Brunetti<\/em>. [7] <\/a> 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] <\/a><\/p>\n During the Elster <\/em>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\u2019s speech adhering to the categorical approach set out in Tam<\/em>. [9] <\/a> 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] <\/a> Still, the Justices\u2019 questions about First Amendment categories allude to possible apprehension, across the bench, about relying on these categories.<\/p>\n Justice Sotomayor made a point of bringing the discussion of First Amendment infringement back to a dispositive question: Is there an abridgment of Elster\u2019s speech? [11] <\/a> Here, she found the answer to be no. [12] <\/a> 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] <\/a> Therefore, there is no \u201ctraditional infringement\u201d of the First Amendment and the Court should apply rational basis review. [14] <\/a> Justice Sotomayor alludes to this conclusion by discarding the categorical approach set forth in Tam<\/em>, stating, \u201cI know it’s almost as if we’re becoming straitjacket — jacketed by labels instead of looking at this, as I do, from first principles.\u201d [15] <\/a> Stewart agreed with the Justices, stating his analogies to government subsidies and public forum doctrines are \u201cillustrative of a general principle\u201d that the government does not abridge a person\u2019s right to free speech when it withholds its assistance to making speech. [16] <\/a><\/p>\n Justice Sotomayor\u2019s reasoning and the solicitor general\u2019s response highlight an underlying issue in applying Tam\u2019s <\/em>reasoning to find that Section 2(c)\u2019s limitation on registration infringes on First Amendment rights. [17] <\/a> In a way, the argument that registration denial impedes Elster\u2019s 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\u2019s argument as a confession that registration is a government benefit. [18] <\/a> 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] <\/a> Justice Kagan seemed to agree that the two are at least related. [20] <\/a> Instead, the focus should turn to whether the registration limitation is \u201creasonable in this context.\u201d [21] <\/a><\/p>\n \u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 <\/strong>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 \u201crobust history [of] restricting names\u201d at common law except in the rare case there is secondary meaning. [22] <\/a> Under Justice Gorsuch\u2019s 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] <\/a> 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] <\/a> However, he did seem more comfortable with limited public forum doctrine than government benefit as a \u201cdoctrinal box\u201d based on Tam<\/em> and Brunetti<\/em>. [25] <\/a> 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<\/em>. [26] <\/a> It is clear Justice Alito most likely agrees with his colleagues’ historical tradition approach, as seen in his question about a person\u2019s \u201cquasi-property interest\u201d in their own name. [27] <\/a><\/p>\n 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\u2019s exclusive use of their own name for goods and services was the Lanham Act. [28] <\/a> The relatively brief history of the Lanham Act does not align with the conservative Justices\u2019 usual approach to a history and traditions test. [29] <\/a> Nevertheless, the limitation on the use of another\u2019s 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] <\/a> Thus, the historical context of Section 2(c) strengthens the argument that there is no First Amendment liberty at stake in Elster\u2019s case and expounds the normative principles of trademark law that distinguish Tam<\/em> from Elster. <\/em>In fact, the Elster mark\u2019s ineligibility is more reasonably explained by its failure to function as a mark than under Section 2(c)\u2019s limitations.<\/p>\n 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<\/em> and Elster<\/em> cases, doctrinal differences may explain why the Court was more willing to cram the Tam<\/em> case into First Amendment categories but hesitated in later cases. Moreover, examining Elster\u2019s mark through the lens of doctrinal values of trademark law demonstrates that a balancing approach like that suggested by Breyer in Brunetti<\/em> may be the most efficient approach to determining whether there is a First Amendment infringement moving forward.<\/p>\n 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] <\/a> 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\u2019s proposed mark may be expressive as it expresses his critiques of Donald Trump\u2019s policy choices. However, TRUMP TOO SMALL does not serve as a source identifier like THE SLANTS could.<\/p>\n Though Elster\u2019s 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] <\/a> Phrases like Elster\u2019s proposed mark have been used to express similar sentiments since the infamous presidential primary debate in 2016. [33] <\/a> Recognizing the popularity of this reference, consumers would likely not trace the phrase back to Elster. [34] <\/a> No third-party users of similar phrases do so to reference Elster, only Trump. If Elster\u2019s mark has any commercial impression when seen by consumers on the front of shirts, it is because of President Trump\u2019s name.<\/p>\n Therefore, the difficulty for Elster\u2019s 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] <\/a> Generally, surnames cannot be inherently distinctive when used merely as a surname. [36] <\/a> Therefore, they require secondary meaning to overcome the registration hurdle set out in Section 2(e)(4). [37] <\/a> Here, it seems that the closest thing to secondary meaning the mark has acquired does not come from Elster\u2019s efforts but from the public\u2019s 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\u2019s \u2018goodwill.\u2019<\/p>\n 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<\/em> and Jack Daniels<\/em>. [38] <\/a> It becomes increasingly clear that use as a mark is central to the Court\u2019s 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 \u201cuse as a trademark\u201d doctrine. [39] <\/a><\/p>\n Beyond TRUMP TOO SMALL\u2019s 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 \u201csource identifying and preventing consumer confusion [,]\u201d not expression and the First Amendment. [40] <\/a> Yet saying consumer confusion is the end of the argument may simplify trademark law in a way that disregards major concerns for a mark\u2019s impact on competitors’ ability to compete and First Amendment issues in restricting third-party use of a mark.<\/p>\n Trademark values like source identification prevent the registration of marks like TRUMP TOO SMALL from creating a chilling effect on other\u2019s political speech. [41] <\/a> Justice Roberts raises the concern that Elster, if given federal registered trademark rights, may be able to impede others\u2019 ability to express similar sentiment. [42] <\/a> Taylor attempted to dispel the issue of the mark\u2019s chilling effect by explaining the doctrine of \u201cfailure to function\u201d will act as a safety net for catching marks that overwhelmingly impede the political speech of others. [43] <\/a> 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] <\/a> Elster\u2019s mark does not appear to serve as a source identifier, as discussed above.<\/p>\n Forgoing the issues of failure to function, Elster\u2019s 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\u2014or anyone else with a political mark like TRUMP TOO SMALL\u2014may 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] <\/a> Still, the potential threat of incurring the costs of a lawsuit may suppress political speech. [46] <\/a> Allowing Elster to police the use of similar phrases on goods by competitors seems akin to letting a mark holder police others\u2019 use of a generic term. [47] <\/a> 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] <\/a> 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\u2019s mark would go against normative principles of trademark law. [49] <\/a><\/p>\n The difference in the mark\u2019s 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] <\/a> 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.<\/p>\n 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<\/em>. [51] <\/a> Breyer urged the Court to utilize the categories as \u201crules of thumbs\u201d while balancing the proportionality of regulation\u2019s speech-related harm to the \u201crelevant regulatory objectives.\u201d [52] <\/a> Accordingly, the Court should weigh the specific empirical and normative principle of trademark law against possible First Amendment concerns for denying Elster\u2019s mark under Section 2(c).<\/p>\n [1]<\/a> See Generally<\/em> Transcript of Oral Argument, Vidal v. Elster (2023) (No. 22-704).<\/p>\n [2]<\/a> Id.<\/em><\/p>\n [3]<\/a> Id.<\/em><\/p>\n [4]<\/a> Id. <\/em>at 20-22.<\/p>\n [5]<\/a> E.g. Id. <\/em>at 14 (Oral remarks by Justice Gorsuch, \u201c\u2026focus 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?\u201d).<\/p>\n [6]<\/a> Footnotes ( ) and accompanying text.<\/p>\n [7]<\/a> Iancu v. Brunetti (Brunetti), 139 S. Ct. 2294, 2306-08 (U.S., 2019) (Breyer J. Concurrence).<\/p>\n [8]<\/a> Footnotes () and accompanying text; Brunetti (Breyer J. Concurrence).<\/p>\n [9]<\/a> Transcript of Oral Argument, Vidal v. Elster, 7-8, 18-20 (2023) (No. 22-704).<\/p>\n [10]<\/a> Id. <\/em>at 18, 22.<\/p>\n [11]<\/a> Id<\/em>. at 20.<\/p>\n [12]<\/a> Id.<\/em><\/p>\n [13]<\/a> Id<\/em>. at 20-21.<\/p>\n [14]<\/a> Id<\/em>. at 21.<\/p>\n [15]<\/a> Id.<\/em> at 20-21.<\/p>\n [16]<\/a> Id<\/em>. at 22.<\/p>\n [17]<\/a> Matal v. Tam (Tam), 582 U.S. 218, 244 (U.S., 2017).<\/p>\n [18]<\/a> Transcript of Oral argument at 46, Vidal v. Elster.<\/p>\n [19]<\/a> Id<\/em>. at 21-22<\/p>\n [20]<\/a> Id.<\/em> at 49.<\/p>\n [21]<\/a> Id<\/em>. at 21 (\u201cNow, to the extent that it might involve speech, one could analogize, but I don\u2019t 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\u201d).<\/p>\n [22]<\/a> Id<\/em>. at 56-57 (Common law, there\u2019s 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\u201d).<\/p>\n [23]<\/a> Id<\/em>. at 14, 56-57.<\/p>\n [24]<\/a> Id<\/em>. at 55-56.<\/p>\n [25]<\/a> Id<\/em>. at 18.<\/p>\n [26]<\/a> Id<\/em>. at 29.<\/p>\n [27]<\/a> Id. at 68. This question alludes to the traditional purpose Section 2(c) has in protecting state rights of publicity.<\/p>\n [28]<\/a> \u00a7 22:34. Use of a natural person’s identity; the right of publicity, 6 Callmann on Unfair Comp., Tr. & Mono. \u00a7 22:34 (4th ed.).<\/p>\n [29]<\/a> Rebecca Tushnet, What\u2019s next for Elster?, Rebecca Tushnet\u2019s 43(B)log (Nov. 3, 2023) https:\/\/tushnet.blogspot.com\/2023\/11\/whats-next-after-elster.html [https:\/\/perma.cc\/X3AN-DJZJ<\/a>]<\/strong> (\u201cno substantive federal TM until the Lanham Act; first attempt struck down as unconstitutional\u2014a tradition that is younger than my parents is not usually the kind of tradition the Court\u2019s current majority pays attention to\u201d).<\/p>\n [30]<\/a> \u00a7 22:34. Use of a natural person’s identity; the right of publicity, 6 Callmann on Unfair Comp., Tr. & Mono. \u00a7 22:34 (4th ed.)<\/p>\n [31]<\/a> \u201cI 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\u2026 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. \u201d Stewart<\/p>\n [32]<\/a> See<\/em>\u00a0T.M.E.P. \u00a7 1202.04(b) (Nov. 2023 ed.) (\u201cMatter 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\u201d); T.M.E.P. \u00a7 1202.04(b) (Nov. 2023 ed.)(citing In re Hulting<\/em>, 107 USPQ2d at 1179)( \u201c\u2026the 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\u201d)<\/p>\n [33]<\/a> E.g., Political Cartoon U.S. Donald Trump small hands policy, Bob Gorrell, The Week, https:\/\/theweek.com\/cartoons\/677440\/political-cartoon-donald-trump-small-hands-policy [https:\/\/perma.cc\/V7AK-6Q4W<\/a>]<\/strong> (Feb. 2, 2017); Tiny Trump Tiny Hands Funny Trump Meme Tshirt Classic T-Shirt, Artist Shot, https:\/\/www.artistshot.com\/tiny-trump-tiny-hands-funny-trump-meme-tshirt-classic-t-shirt-p-1208113310?srsltid=AfmBOop8IxFRal-1MGcmh-Xay_ZYHi20eQtghJDl8idPxpgphEKXbzW4d5w [https:\/\/perma.cc\/DZG3-8XGD]<\/strong> (Visited Jan. 6, 2023).<\/p>\n [34]<\/a> See \u00a0In Re Lizzo LLC, TTAB, Serial Nos. 88466264 and 88466281 at 34-36 (\u201cBut 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\u201d).<\/p>\n [35]<\/a> Supra <\/em>notes 22-27 and accompanying text.<\/p>\n [36]<\/a> 15 U.S.C. \u00a7 1052(e)(4); See e.g<\/em>. In re United Distillers.<\/em><\/p>\n [37]<\/a> 15 U.S.C. \u00a7 1052(f).<\/p>\n [38]<\/a> See generally <\/em>Abitron Austria GmbH v. Hetronic International, Inc., 143 S.Ct. 2522 (U.S., 2023) (holding infringing \u201cuse in commerce\u201d 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).<\/p>\n [39]<\/a> E.g. <\/em>Pennsylvania State University v. Vintage Brand, LLC, 614 F.Supp.3d 101 (M.D.Pa., 2022).<\/p>\n [40]<\/a> Transcript of Oral argument at 53, Vidal v. Elster (\u201cAnd trademark is not about expression. Trademark is not about the First Amendment and your –and \u2013and people’s ability to speak. Trademark is about source identifying and preventing consumer confusion\u201d).<\/p>\n [41]<\/a> 88 Brook. L. Rev. 839, 842 (\u201c\u2026the speaker is often not only asserting the right to speak, but also to exclude others from saying the same thing.”).<\/p>\n [42]<\/a> Transcript of Oral argument at 60, Vidal v. Elster.<\/p>\n [43]<\/a> Id<\/em>. at 61-62.<\/p>\n [44]<\/a> Id<\/em>. at 62.<\/p>\n [45]<\/a> \u00a7 31:139. Balancing trademark enforcement with free speech principles, 6 McCarthy on Trademarks and Unfair Competition \u00a7 31:139 (5th ed.) (\u201cThere 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\u201d).<\/p>\n [46]<\/a> Id<\/em>.<\/p>\n [47]<\/a> \u00a7 12:2. The policy basis for the generic name rule, 2 McCarthy on Trademarks and Unfair Competition \u00a7 12:2 (5th ed.)<\/p>\n [48]<\/a> \u00a7 12:2. The policy basis for the generic name rule, 2 McCarthy on Trademarks and Unfair Competition \u00a7 12:2 (5th ed.)(“Judge Friendly remarked that to permit exclusive trademark rights in a generic name \u201cwould grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are\u201d).<\/p>\n [49]<\/a> \u00a7 31:139. Balancing trademark enforcement with free speech principles, 6 McCarthy on Trademarks and Unfair Competition \u00a7 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”).<\/p>\n [50]<\/a> 15 U.S.C. \u00a7 1127 (\u201cThe term \u201ctrademark\u201d includes any word, name, symbol, or device, or any combination thereof\u2014 (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\u201d).<\/p>\nSupreme Court Oral Argument:<\/strong><\/h4>\n
Simplifying the Approach: <\/u><\/h5>\n
A Historical Approach to Trademark Rights to One\u2019s Own Name:<\/u><\/h5>\n
A Return to Doctrinal Principles of Trademark Law: <\/strong><\/h4>\n
\u2018Failure to Function\u2019 and the Use of Surnames as Marks<\/u><\/h5>\n
Fair Unfair Competition and Others\u2019 First Amendment Rights <\/u><\/h5>\n
Balancing Trademark Principles and First Amendment Interests<\/u><\/h5>\n
\n