Citing the common law right to use one’s own name commercially and to prevent others from doing so, the U.S. Supreme Court on June 13, 2024 upheld the constitutionality of a challenged restriction on trademark registration. Section 2(c) of the Lanham Act, 15 U.S.C. 1052(c), precludes registering a mark containing the name of a living person without that person’s permission. When the U.S. Patent & Trademark Office refused Steven Elster’s application to register the phrase TRUMP TOO SMALL for use on clothing, citing the 2(c) restriction, Elster appealed, alleging that the restriction is unconstitutional as applied in his case because it abridges his free right to criticize a public figure. The Trademark Trial & Appeal Board affirmed; but the Court of Appeals for the Federal Circuit reversed, expressing concern that withholding registration in such a case could offend the First Amendment’s guarantee of free speech.
The Supreme Court granted certiorari and, in a unanimous judgment, found the provision constitutional. The Court’s opinion, authored by Justice Clarence Thomas, found that the refusal of federal registration caused no harm to Elster’s speech rights, as nothing prevents him from putting the “Trump Too Small” message onto t-shirts and other apparel whether or not that phrase is a registered trademark. Indeed, though the Court didn’t mention it, the Trademark Office regularly refuses to register as trademarks wording that merely delivers a humorous, critical, or thoughtful message rather than acting as a brand or source-indicator. The whole case might have been avoided had the Trademark Office refused to register Elster’s proposed mark for failure to function as a trademark.
The Court nodded to the well-established principle that every person has a right to prevent others from commercially exploiting the person’s name without permission. Known as the right of publicity, this right is embodied in common law privacy tort and is the basis for decisional law as well as statutory protection regimes in 25 states. It would have been hard to imagine the Court’s finding 2(c) unconstitutional, not only depriving individuals of the ability to protect their names from unpermitted commercial use, but also giving trademark registrants exclusive rights to commercialize the names of non-consenting individuals and to prevent others (including the individuals themselves) from using those names in commerce.
Leaving open the possibility that future cases might question the constitutionality of specific applications of 2(c), the Court’s self-declared “narrow decision” tells us that Elster’s TRUMP TOO SMALL t-shirt is not that case. “We hold only that history and tradition establish that the particular restriction before us, the names clause in §1052(c), does not violate the First Amendment,” the Court wrote.
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