In June 2024, the Supreme Court issued a landmark decision with practical business implications for trademark rights versus First Amendment rights to free speech. [Vidal v. Elster, 2024 WL 2964139 (U.S. June 13, 2024)].
The case centered on the trademark application for “Trump Too Small,” for use on shirts and hats, referencing a remark made during a 2016 Presidential primary debate.
The Patent and Trademark Office (PTO) refused the registration based on the “names clause” of the Lanham Act, which prohibits trademarks that contain a name identifying a living individual without his/her written consent. The applicant contested the refusal arguing it violated his First Amendment rights. However, the Supreme Court upheld the PTO’s decision.
The Court’s decision provides significant insights into how these laws interact and the practical business implications for the public. It emphasizes the robust protection afforded to personal names under trademark law. Businesses must now be even more cautious when attempting to use names, especially those of public figures, in their branding and marketing efforts. Without obtaining written consent, using a living individual’s name in a trademark can lead to refusal of registration, which eliminates the coveted intellectual property protection for companies looking to capitalize on the name recognition of celebrities or other well-known individuals.
The decision also clarifies the boundaries of the First Amendment in the context of trademark law. While free speech allows for parody, criticism, and commentary, it does not extend to the unauthorized commercial use of personal names. Furthermore, the ruling reinforces the importance of protecting an individual’s right to control the commercial use of their name.
Businesses should enhance their due diligence processes when creating and registering trademarks. This involves thorough searches and legal reviews to ensure that proposed trademarks do not infringe on the rights of individuals or other entities. Marketing campaigns that incorporate names of famous individuals must be carefully crafted to avoid infringing on trademark laws. Creative teams should work closely with legal advisors to navigate the legal landscape and develop campaigns that comply with the law while still achieving their marketing goals.
By understanding and applying these principles, businesses can better navigate trademark registration and safeguard their intellectual property, ensuring clear and accurate branding to maintain consumer trust and avoid legal issues.
Weinberg Gonser LLP helps clients establish brands and manage trademark portfolios by securing, maintaining and enforcing trademark rights.