Aunt Jemima, Uncle Ben’s, and the Cleveland Indians, three venerable brands in existence since the late 19^th and early-mid 20^th century, all eliminated in an extremely short period of time due to shifting cultural standards. Corporate brand owners bowed down to public pressure, acquiescing in order to offend no one.

In short, these well-established trademarks were literally cancelled by the USPTO or will soon be, with the respective brand owners each embarking on costly rebranding campaigns as a result. Pearl Milling Company, Ben’s Original and the Cleveland Guardians all seem to lack the same historical cachet and decades of goodwill, with some of these new trademarks only being recently registered.

Whether notions of political correctness, parody issues, names of individuals, or definitions of immorality are involved, there’s a frequent tension between rights of free speech under the First Amendment, rights of publicity, and prevailing standards of decency, sometimes in conflict and other times in alignment with the commercial objectives of brand owners. However, personal branding interests may in fact be considered most valuable of all.

Last year, in Recent Trademark Parody Cases & 2023 Case Preview1, we discussed the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC2, an important case for defining acceptable standards of parody as a defense to trademark infringement. Contrary to similar cases supporting the Defendant’s First Amendment claims, this Court lacked a sense of humor and ruled in favor of the brand owner when finding that the Defendant’s whiskey bottle-shaped Jack Spaniels dog toy violated the Plaintiff’s trademark rights to its distilled spirits. In other words, commercial interests trumped free speech.

Taking the opposite approach in both Matal v. Tam3 and Iancu v. Brunetti4, SCOTUS found in favor of freedom of expression over morality standards in both of these cases, while again siding with the brand owners and essentially nullifying the Trademark Office’s long-standing statutory authority to deny registration of scandalous trademarks under the disparagement clause, 15 U.S.C. §1052, in pertinent part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

Tam involved the initial refusal of the trademark THE SLANTS for an Asian-American music band. In Brunetti, the applicant’s FUCT trademark for clothing was also rejected by the USPTO based on the same Lanham Act section. While each Trademark Examiner concluded that a majority of the relevant purchasing public would find the marks in question offensive, putting rejection fully within the purview of 15 U.S.C. 1052(a), the Supreme Court in Tam decided that the disparagement clause of the Lanham Act was in violation of the First Amendment on the basis of viewpoint discrimination.

In the majority opinion, Justice Alito opined:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” United States v. Schwimmer, 279 U. S. 644, 655 (1929).

Similarly, in Brunetti, the Court reached the same conclusion, noting that the USPTO is essentially a government entity engaging in viewpoint discrimination in order to determine whether a trademark is considered “immoral” or “scandalous”, thus rendering the disparagement clause invalid and unconstitutional since it violated the brand owner’s rights to free speech.

Most recently, the Supreme Court issued its ruling in Vidal v. Elster5 just last month. Again, the Trademark Office rejected an application based on statutory prohibition. But this time, the Court sided with the USPTO in denying the Plaintiff’s intent-to-use application on TRUMP TOO SMALL for shirts. Rather than basing its refusal on scandalousness, the Trademark Office now argued that the mark identified a living individual without written consent, which is expressly barred under the names clause of the Lanham Act, 15 U.S.C. §1052, in pertinent part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. 

Predictably, in his Respondent’s Brief6, the brand owner claimed First Amendment protection, citing the Tam and Brunetti decisions in support of his position. But in this case, Trump trumps “Trump” as the former President’s rights to his name as a living individual were deemed more important than the brand owner’s political speech claims.

In achieving a favorable SCOTUS ruling against registration of the mark in question, the USPTO successfully argued, in its Petitioner’s Brief7 that the statutory prohibition against registration of a living individual’s name effectively protects rights of publicity and privacy, based on history and tradition as other marks had been refused registration for the same reason. Furthermore, they contended that the statutory bar to registration under the names clause is viewpoint-neutral and should be subject to less scrutiny upon appeal. Finally, they noted that denial of the application in question was based on the names clause only and did not consider the actual ideas or opinions being conveyed. Hence, unlike either Tam or Brunetti, there could be no viewpoint discrimination in this case.

Reversing the Federal Circuit’s ruling in In re Elster8, which supported the brand owner’s rights to free speech under the First Amendment, the Court unanimously decided that the names clause is not in conflict with the First Amendment, thus agreeing with the USPTO’s denial of registration, although Elster would still be able to express his opinions through the sale of goods under his TRUMP TOO SMALL mark.

According to the Court’s historical analysis, the names clause is content-based because it only discriminates against registration of marks containing the name of a living individual without written consent. However, since the names clause is also viewpoint neutral, it is capable of coexisting with the First Amendment and thus, considered constitutional.

As Justice Thomas concluded in his opinion for the majority:

Our decision today is narrow. We do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor do we suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. 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. Although an occasion may arise when history and tradition cannot alone answer whether a trademark restriction violates the First Amendment, that occasion is not today. In a future case, we can address the “distinct question” whether “a viewpoint-neutral, content-based trade-mark restriction” is constitutional without “such a historical pedigree.”

Based on the Court’s ruling, perhaps “Trump” is not “too small” but actually “too big”under trademark law. While a novel argument could have been made that TRUMP was merely being used as a verb rather than as a proper noun, given the notoriety of the public figure in question and the specific context of the message itself, that tactic would likely have been rejected. In other words, according to §1202.03 of the Trademark Manual of Examining Procedure (“TMEP”), a lesser-known individual’s name may have avoided the same level of scrutiny9.

Also working against the trademark applicant in Elster was the potential for a further refusal, after filing a Statement of Use, based on the mark being deemed merely ornamental under §1202.03 of the TMEP10and thus, failing to function as a trademark or identifier of source.

As such, Elster seems facially-valid, based on a proper review of facts and correct application of law, also reconciling with Jack Daniels, given the rejection of the First Amendment claim in each decision, along with a particular focus on the avoidance of source confusion. It is also consistent with both Tam and Brunetti as the Court is somewhat paradoxically promoting free speech by denying Elster’s monopoly on TRUMP TOO SMALL, while still allowing him and others unfettered use of the slogan in question, without the benefits of federal trademark registration though.

Distinguishing Elster, however, are the relatively weak commercial interests at stake in that case as compared to the more established brands in Tam, Brunetti, and especially Jack Daniels. As such, it would be intriguing to see whether a famous brand would also be denied trademark registration based on strict statutory authority or if an exception could be creatively carved out in favor of the brand owner’s commercial interests once again.

Likewise, could First Amendment considerations prevail in the future if the individual in question were not so widely-known? In such instances, courts may be able to craft a distinction between the relative fame of the brand owner’s trademark versus the prominence of the personal brand at issue.

Unlike corporate branding, personal branding rights have traditionally been enforced outside the scope of trademark law through economic and dignitary interest torts, such as defamation and right of publicity11. However, the names clause codifies right to publicity in regard to unauthorized trademark registration, as now affirmed in Elster.

Under state law, right to publicity is not viewed as an inalienable right, such as freedom of speech, but more of an economic right, that is typically reserved for the famous. Given the rise of AI-generated deepfakes, rights of publicity could potentially be extended to everyone through federal law. If approved in its original form, rights holders, under the NO FAKES Act12 would be granted a total of seventy years after the individual’s death to authorize use of image, voice or visual likeness within a digital replica.

Similarly, U.S. copyright law extends coverage for seventy years following the author’s death. While short phrases are not eligible for protection due to a lack of copyrightable subject matter, there is no prohibition regarding the use of an individual’s name or likeness without consent. By focusing on the elimination of source confusion through the names clause, for instance, U.S. trademark law reduces consumer search costs and the risk of false association or endorsement, thereby furthering commercial interests over the freedom of expression that is prioritized through copyright.13

Even though 15 U.S.C. §1052(e)(4) of the Trademark Act promotes similar goals by barring registration of any marks deemed to be “primarily merely a surname” the names clause under 15 U.S.C. §1052(c) is much broader in scope, particularly for famous individuals. It would be interesting to see whether trademark dilution and the tarnishment or blurring of famous marks under 15 U.S.C. §1125 is considered applicable to personal branding as well and could successfully withstand First Amendment scrutiny.

Free speech was considered paramount in Tam and Brunetti as source confusion was not at issue. Instead, consumers could simply self-select, essentially voting with  their wallets based on personal standards of decency. Elster, on the other hand, valued economic efficiency and rights of publicity over free market consumer choice and the individual brand owner’s First Amendment rights.

Perhaps the logic behind Elster is consistent with the recent forced disappearance of those allegedly-offensive legacy marks. One constant theme running through the above cases is the way in which brands tend to reflect shared cultural values. Nevertheless, as established in Elster, rights  of publicity, along with personal branding, may appropriately-enough  trump all.

1 William Scott Goldman, Recent Trademark Parody Cases & 2023 Case Preview, Bloomberg Law (January 2023), https://www.bloomberglaw.com/external/document/X9GPGNVK000000/trademarks-professional-perspective-recent-trademark-parody-case

2 Jack Daniel’s Properties, Inc. v. VIP Products LLC, 143 S. Ct. 1578 (2023).

3 Matal v. Tam, 137 S. Ct. 1744 (2017).

4 Iancu v. Brunetti, 139 S. Ct. 2294 (2019).

 5 Vidal v. Elster, 602 U. S. ____ (2024).

6 See Respondent’s Brief, Vidal v. Elster, 602 U. S. ____ (2024).

7 See Petitioner’s Brief, Vidal v. Elster, 602 U. S. ____ (2024).

8 In re Elster, 26 F. 4th 1328, 1331 (Fed. Cir. 2022).

9 1206.02 Connection With Goods or Services

Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual will be associated with the goods or services, either because: (1) the person is generally known or so well known in the field relating to the goods or services that the public would reasonably assume a connection; or (2) the individual is publicly connected with the business in which the mark is used. Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005), aff’d per curiam, No. 2007- 1364, 2007 U.S. App. LEXIS 28399 (Fed. Cir. Dec. 7, 2007). The Trademark Trial and Appeal Board noted as follows in Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979): [Section] 2(c) was not designed to protect every person from having a name which is similar or identical to his or her name registered as a trademark. Such a scope of protection would practically preclude the registration of a trademark consisting of a name since in most cases there would be someone somewhere who is known by the name and who might be expected to protest its registration. Rather, the Statute was intended to protect one who, for valid reasons, could expect to suffer damage from another’s trademark use of his name. That is, it is more than likely that any trademark which is comprised of a given name and surname will, in fact, be the name of a real person. But that coincidence, in and of itself, does not give rise to damage to that individual in the absence of other factors from which it may be determined that the particular individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection or because the individual is publicly connected with the business in which the mark is used.

10 1202.03    Refusal on Basis of Ornamentation

Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark, as required by §§ 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, and 1127. 

11  William Scott Goldman, Branding Law: Cases and Materials, 619 (2016).

12 No Artificial Intelligence Fake Replicas And Unauthorized Duplications Act of 2024, H.R. 6943, 118^th Cong.  (2024).

13 “[T]he Framers intended copyright itself to be the engine of free expression.” Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985).

Originally published on Law360.com