USA – TEXAS Trends and Developments Contributed by: John Flaim and Dyan House, Baker McKenzie
Baker McKenzie 1900 N. Pearl Street Suite 1500 Dallas Texas 75201 USA
Tel: +1 214 978 3000 Fax: +1 214 978 3099 Email: dyan.house@bakermckenzie.com Web: www.bakermckenzie.com
Vidal v Elster History and summary of case
Developments in US Trade Mark Law in 2025: Intersection of the First Amendment and Trade Marks Over the past few years IP lawyers have been tracking First Amendment assertions in the trade mark context. In recent years the US Supreme Court has considered cases involving offensive trade marks and First Amendment defences in Matal v Tam and Iancu v Brunetti. In both of those cases, the Court held that trade mark restrictions that discriminate on viewpoint violate the First Amendment. The most recent batch of cases to address the interplay between trade mark law and the First Amendment emphasise the complexities of the subject, particularly with respect to political commentary and parody. The discussion here will focus on two of these recent cases with significant developments in the last year. In each case, the First Amendment was raised. And in each case the Supreme Court dis - missed the First Amendment challenge. To help put the cases fully in context, this article will also touch on additional issues in the cases – trade marks that involve a living individual and trade mark infringement and dilution.
The 2024 Supreme Court decision in Vidal v Elster dealt with political commentary and the rights of a living individual in trade mark law. At issue was the trade mark application for the mark TRUMP TOO SMALL. I) US Patent and Trademark Office In 2018, Steve Elster filed an application to reg - ister the trade mark TRUMP TOO SMALL in con - nection with clothing. The USPTO Examining Attorney refused registration on two bases: (i) that the mark identified a living individual whose consent was not of record; and (ii) that the mark suggested a false association with Donald Trump. Elster responded to the refusal argu - ing that the mark is political commentary and therefore protected under the First Amendment. The Trademark Trial and Appeal Board upheld the Examining Attorney’s refusal to register the TRUMP TOO SMALL mark under Section 2(c) of the Lanham Act, also known as the “names clause”. Because the Board affirmed the 2(c) refusal, it did not address the false association refusal under Section 2(a) of the Lanham Act.
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