Supreme Court Hears “Trump Too Small” Trademark Case

The US Supreme Court will resolve a trademark dispute over an attempt to register the mark “Trump Too Small” for printing on shirts.

Elster applied for the trademark in 2018. It was inspired by an exchange of insults at a 2016 Republican presidential candidate debate. Then-candidate Donald Trump referred to US Senator Marco Rubio as “Little Mario.” Rubio responded with a comment on Trump’s small hands.

Trump responded,

Look at those hands. Are they small hands? If they're small, something else must be small. I guarantee you, there's no problem. I guarantee it.

According to Reuters, Elster said that "Trump Too Small" expressed his opinion about "the smallness of Donald Trump's overall approach to governing."

The US Patent and Trademark Office (USPTO) rejected the proposed mark on two grounds:

First, the examiner concluded that the mark was not registrable because section 2(c) of the Lanham Act bars registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.”

The same section prohibits the use as a trademark of

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.

Trump didn’t give his permission for Elster to use the mark.

Secondly, the examiner denied registration of the mark under Lanham Act section 2(a)’s false association clause, which bars registration of trademarks that “falsely suggest a connection with persons, living or dead.”

Elster appealed to the Trademark Trial and Appeal Board (TTAB or Board) and argued that sections 2(c) and 2(a) constituted impermissible content-based restrictions on speech. The Board affirmed the examiner’s denial of the mark.

Elster appealed to the Federal Circuit, which issued its decision in February 2022 and reversed the Board’s ruling.

The court noted that

It is well established that speech ordinarily protected by the First Amendment does not lose its protection “because the [speech] sought to be distributed [is] sold rather than given away.”

“Nor,” said the court, “is expressive speech entitled to a lesser degree of protection because it is printed on a T-shirt.”

In fact, “there is no question that … T-shirts are a medium of expression prima facie protected by the free-speech clause of the First Amendment.”

The court noted that

No … claim is made here that President Trump’s name is being misappropriated in a manner that exploits his commercial interests or dilutes the commercial value of his name, an existing trademark, or some other form of intellectual property.

Also,

The government, in protecting the right of publicity, also has an interest in preventing the issuance of marks that falsely suggest that an individual, including the President, has endorsed a particular product or service.

However, said the court, that is not the situation here.

No plausible claim could be or has been made that the disputed mark suggests that President Trump has endorsed Elster’s product.

In addition, said the court, “The right of publicity is particularly constrained when speech critical of a public official is involved.”

Thus, concluded the court,

The government has no valid publicity interest that could overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark. As a result of the President’s status as a public official, and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech.

The court thus concluded that the Board’s application of section 2(c) to Elster’s mark was unconstitutional.

The government appealed to the Supreme Court, and the USPTO director, Kathy Vidal, was named the appealing party.

The issue before the Supreme Court is “whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”

The Supreme Court has struck down two trademark laws in recent years on free speech grounds.

In 2017, the Court ruled in favor of an Asian-American rock band called “The Slants” that challenged a ban on trademarks considered “disparaging.” The band sought to “reclaim” the term sometimes used as a slur.

In 2019, as NPR reported, the Court struck down a ban on trademarking words and symbols deemed "immoral" or "scandalous." The case was brought by clothing designer Erik Brunetti, who sought to trademark the phrase FUCT. He claimed it should be correctly pronounced as four separate letters and stood for “Friends U Can’t Trust.”

Justice Elena Kagan, writing for the majority, noted, “you might read it differently, and if so, you would hardly be alone."

Brunetti used the mark mainly on hoodies, loose pants, shorts, and T-shirts and sought trademark protection to fight counterfeiters, who he said were costing him money.

All nine justices agreed in the Brunetti case that the federal law banning "immoral" trademarks was too broad and could allow the government to grant trademarks to messages it approved and deny trademarks for messages it disapproved.

Justice Kagan noted that opposing messages were treated differently under trademark law. For example, "You Can't Spell Healthcare Without THC" was denied trademark protection, but a trademark was granted for "Say No To Drugs."

Similarly, a game called “Praise the Lord” was given trademark protection, but a trademark was denied for “Bong Hits for Jesus.”

At a hearing on November 1, according to Reuters, the Supreme Court Justices appeared skeptical of Elster’s claims:

Conservative Chief Justice John Roberts told Elster's attorney, Jonathan Taylor, that a win for his client could cause problems for freedom of expression by others.

"Presumably, there will be a race to trademark 'Trump Too This, Trump Too That,' whatever. And then, particularly in an area of political expression, that really cuts off a lot of expression that other people might regard as an important infringement on their First Amendment rights," Roberts said.

The Supreme Court’s ruling is expected by the end of June 2024.