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 dismissed 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.

Vidal v Elster

History and summary of case

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 register the trade mark TRUMP TOO SMALL in connection 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 arguing 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.

II) Federal Circuit

Elster appealed the Board’s refusal to register the mark to the Court of Appeals for the Federal Circuit. The Federal Circuit sided with Elster, reversing the Board’s holding on the grounds that the names clause violated the First Amendment.

III) Supreme Court

The USPTO appealed to the Supreme Court who then held, in a unanimous decision, that the USPTO’s refusal to register the mark was not a violation of the applicant’s First Amendment rights. The Elster case was the first time the Supreme Court considered the constitutionality of a content-based, viewpoint-neutral trade mark restriction. Justice Thomas went through a history of names in trade mark law. The Court ultimately concluded that the names clause, which was borne out of the common law tradition, supports the restriction of the use of another person’s name in a trade mark. Thus, the Court held, the names clause does not violate the First Amendment as it is viewpoint-neutral.

IV) Outcome and discussion of additional issues

The Supreme Court reversed the decision of the Federal Circuit who then issued an Order vacating its prior opinion and judgment and affirming the decision of the Trademark Trial and Appeal Board. On 16 September 2024, the Federal Circuit issued the formal mandate concluding the proceedings and resulting in the abandonment of Elster’s application.

The Lanham Act’s names clause, 15 U.S.C. Section 1052(c), precludes the registration of a trade mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” There are two primary goals underlying this prohibition: (i) to protect the rights of privacy and publicity that a living person has in the designations that identify them; and (ii) to protect against source deception. The names clause can apply to a mark involving a surname if the individual is known by the surname alone. In the Elster case, the Trademark Trial and Appeal Board found that Trump standing on its own is recognised as a reference to President Donald Trump. Moreover, Elster himself confirmed that the use of the name TRUMP in the mark referred to President Trump.

VIP Products LLC vs Jack Daniel’s Properties Incorporated

History and summary of case

I) Arizona District Court

VIP Products sold a toy for dogs that mimicked the design of a Jack Daniel’s whiskey bottle. VIP Products called this product Bad Spaniels. Jack Daniel’s took issue with the Bad Spaniels products on the basis of trade mark infringement and dilution. Jack Daniel’s demanded that VIP Products stop selling their Bad Spaniels products. They refused to do so and filed an action in the Arizona District Court seeking a declaratory judgment that their Bad Spaniels product did not infringe or dilute Jack Daniel’s marks. Jack Daniel’s counterclaimed alleging trade mark infringement and dilution. VIP Products argued that its Bad Spaniels toy was a parody and therefore was protected under the First Amendment. The Court denied VIP Products’ motion on summary judgment and rejected VIP Products’ fair use defences. The Court found that Jack Daniel’s trade dress and whiskey bottle design were distinctive and non-functional, and thus were entitled to trade mark protection. Following a bench trial, the Court found in favour of Jack Daniel’s both as to infringement and tarnishment of its trade marks. The Court’s judgment resulted in a permanent injunction that prevented VIP Products from “sourcing, manufacturing, advertising, promoting, displaying, shipping, importing, offering for sale, selling or distributing” its Bad Spaniels dog toy.

II) Ninth Circuit and First Remand to District Court

VIP Products appealed to the Ninth Circuit who revered the lower court’s ruling as to dilution and vacated the judgment as to trade mark infringement. The Ninth Circuit, in particular, held that VIP Products’ Bad Spaniels mark was protected under the First Amendment as the mark was expressive in nature.

The case was remanded to the Arizona District Court who then applied the two-prong test from Rogers v Grimaldi, the seminal case that balances trade mark rights against First Amendment concerns. Under the Rogers test, a complainant must show that the challenged use of the mark (i) “has no artistic relevance to the underlying work”; or (ii) that it “explicitly misleads as to the source or the content of the work.” The District Court held that Jack Daniel’s did not satisfy either of the prongs of the Rogers test.

III) Supreme Court

Jack Daniel’s appealed to the US Supreme Court who granted certiorari as to the Ninth Circuit’s rulings on both trade mark infringement and dilution. On 8 June 2023, the US Supreme Court issued its opinion in which it vacated the Ninth Circuit’s decision and remanded the case. The Supreme Court held that Rogers did not apply when the mark at issue was being used by the infringing party as a trade mark.

IV) Outcome and discussion of additional issues

On remand from the Ninth Circuit, the Arizona District Court issued an Amended Findings of Fact, Conclusions of Law, and Order on 23 January 2025, in which it held that VIP Products’ Bad Spaniels mark did not infringe, but does tarnish, the Jack Daniel’s marks. The Court concluded that a permanent injunction is appropriate in this case.

The Court also addressed VIP Products’ First Amendment defence in the most recent ruling. In short, Jack Daniel’s argued, and the Court agreed, that VIP Products waived its First Amendment challenge because VIP Products did not raise the challenge in the pleadings.

V) Trademark Dilution Revision Act (TDRA)

The TDRA defines dilution by tarnishment as “associating arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark” (15 USC Section 1125(c)(2)(C)). Stated another way, dilution is the “whittling away of the value of a trade mark when it’s used to identify different products” (4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition Section 24.67, at 24–120; Section 24.70, at 24–122 (2001)). There are three factors to be considered in a dilution by tarnishment claim:

• fame;
• similarity of the marks; and
• reputational harm.

i) Fame

As US trade mark lawyers are well aware, demonstrating that a mark is famous is a difficult task. With a dilution by tarnishment claim, the brand owner must show that its mark was famous before the accused use began. Courts consider various factors in making a determination of fame, including:

• duration, extent, and geographic reach of advertising and publicity of the mark;
• amount, volume, and geographic extent of sales of goods or services offered under the mark;
• extent of actual recognition of the mark; and
• whether the mark has been registered on the Principal Register of the US Patent and Trademark Office.

Here, the Court found that Jack Daniel’s met this criteria. Jack Daniel’s is the best selling whiskey in the United States, has billions of dollars in sales, extensive advertising, and has global recognition. Consumer awareness of the Jack Daniel’s brand consistently sits around the 98% mark.

ii) Similarity

Under the TDRA, a party need only show similarity between the famous mark and the accused mark to support a likelihood of dilution finding. The District Court noted that the TDRA does not require a finding of substantial similarity or identicalness in order to find that the marks are similar. While the TDRA does not set forth clear factors for the comparison of the marks, courts look to some of the same factors used in trade mark infringement – appearance, sound, and meaning. In the Bad Spaniels case, the Court found that VIP Products set out to create a toy that mimicked nearly all aspects of the Jack Daniel’s whiskey bottle including names, bottle shape and size, font choices, colours, etc.

iii) Reputational harm

The final factor to consider in a dilution by tarnishment case is whether the accused use causes reputational harm to the brand owner. As the Second Circuit noted in Tiffany (NJ) Inc. v eBay, Inc., reputational harm arises “when the plaintiff’s trade mark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner’s product.” In the Bad Spaniels case, the parties presented expert testimony with regard to reputational harm. The Court found the testimony from the Jack Daniel’s expert to be more compelling as he has “specialized knowledge and specific expertise in consumer psychology to evaluate and conclude that there is a likelihood of a tarnishing effect of the ‘Bad Spaniels’ dog toy upon Jack Daniel’s trademarks and trade dress.”

VI) Trade mark infringement

The Court noted that Jack Daniel’s needed to prove three elements to succeed in its trade mark infringement claim:

• distinctiveness;
• non-functionality; and
• likelihood of confusion.

As the Court previously ruled that Jack Daniel’s trade mark and trade dress are, as a matter of law, distinctive and non-functional, the only consideration was the likelihood of confusion element. For this analysis, the Court applied the Sleekcraft factors, which are to be considered in any likelihood of confusion analysis in the Ninth Circuit. As with the reputational harm element of the dilution by tarnishment claim, the parties relied on expert testimony for the likelihood of confusion factor. Finding that VIP Products intended to create a product that parodied the Jack Daniel’s products and successfully did so, the Court considered the Sleekcraft factors after noting that a successful parody is not often likely to create confusion. While neither party prevailed with respect to the Sleekcraft factors, the Court was not able to conclude that confusion is likely.

Conclusion

The cases discussed above both have narrow holdings and, as is typical with trade mark cases, fact-specific analyses. Because of that, the authors expect to see more challenges with regard to applications of the First Amendment in the trade mark context in the coming years.