top of page
  • Writer's pictureTodd


On June 5, 2023, the U.S. Supreme Court announced it was going to hear another trademark case. The USPTO denied registration for TRUMP TOO SMALL. The Federal Circuit held when applied to a public figure, this violates the First Amendment. The Supreme Court has agreed to hear that case. In re Elster, 26 F.4th 1328 (Fed. Cir. 2022), cert. granted, Vidal v. Elster, 598 U.S. ____ (June 5, 2023) (No. 22-704).

Other portions of the Lanham Act have been struck down by the Supreme Court under the First Amendment.

One case was based on clothing with the letters FUCT, meaning “Friends You Can Trust.” The USPTO had denied registration because it was scandalous. The Supreme Court said that the prohibition on immoral and scandalous marks violates the First Amendment. Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019).

In another case, a band consisting of people of Asian descent had a band named “Slants” with the purpose of taking the stigma away from the word. The USPTO denied trademark registration, saying that it was disparaging against persons of Asian descent. The TTAB affirmed. The Federal Circuit affirmed. The Federal Circuit en banc found that the decision to deny registration violated the First Amendment. On appeal, in 2017, the United States Supreme Court held that the prohibition for disparaging marks violated the First Amendment. It is not up to the government to decide what is offensive. Matal v. Tam, 582 U.S. ___ (2017).

This month, the Supreme Court held narrowly narrowly ruled that neither the Rogers test nor the fair-use exclusion in the Lanham Act for parodies applies when a mark is used as a source identifier. The case was remanded for a decision on likelihood of confusion. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023).

This fall, the Court will again hear a case that involves the intersection of the First Amendment and trademarks.

Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, let’s work together on your trademark needs


bottom of page