Supreme Court Upholds Refusal of “Trump Too Small” Trademark

The US Supreme Court has ruled that the US Patent and Trademark Office (USPTO) correctly refused to grant a trademark for the phrase “TRUMP TOO SMALL.”

During a 2016 presidential primary debate, Senator Rubio of Florida said that then-candidate Donald Trump had “small hands,” adding, “And you know what they say about guys with small hands.

Steve Elster sought to register the trademark “Trump too small,” accompanied by an illustration of a hand gesture. As the New York Times noted,

Mr. Elster has used the phrase on the front of T-shirts with a list of Mr. Trump’s positions on the back. For instance: “Small on civil rights.”

Elster sold the shirts online for $39.99. The decision doesn’t prevent him from continuing to use the phrase or sell the shirts. However, he can’t block others from doing the same under trademark law.

The USPTO refused to register the mark because the Lanham Act prohibits registration of a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.” This is known as the “names clause” and it excludes from registration “not only full names but also surnames, shortened names, and nicknames, so long as the name does in fact identify a particular living individual.”

Elster contended that this prohibition violated his First Amendment right to free speech. The Court held that it does not.

The court had previously held that trademark restrictions that discriminate based on viewpoint violate the First Amendment.

In Matal v. Tam, the Court held that the Lanham Act’s bar on disparaging trademarks violated the First Amendment. That case, as the Times reported,

concerned an Asian American dance-rock band called the Slants. The court split 4 to 4 in much of its reasoning, but all the justices agreed that the provision at issue in that case violated the Constitution because it took sides based on speakers’ viewpoints.

In another case, the Court held that the Lanham Act’s bar on trademarks containing immoral or scandalous matter likewise violated the First Amendment. That case concerned a line of clothing sold under the brand name FUCT. Justice Kagan, writing for the majority, said the law was unconstitutional because it “disfavors certain ideas.”

However, said the Court,

The names clause does not facially discriminate against any viewpoint. No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent. It does not matter “whether the use of [the] name is flattering, critical or neutral.”…. The Government is thus not singling out a trademark “based on the specific motivating ideology or the opinion or perspective of the speaker.”

Elster suggested that the names clause verges on viewpoint discrimination in practice. Said the court,

According to Elster, it is easier to obtain consent for a trademark that flatters a person rather than mocks him. This Court has found that a law can discriminate based on viewpoint in its practical operation. … But, here, there are many reasons why a person may be unable to secure another’s consent to register a trademark bearing his name. Even when the trademark’s message is neutral or complimentary, a person may withhold consent to avoid any association with the goods, or to prevent his name from being exploited for another’s gain.

The Court’s opinion (authored by Justice Thomas) includes a long history of American trademark law, noting that

This first [trademark] law contained prohibitions on what could be protected as a trademark. For example, the law would not protect a trademark that contained “merely the name of a person . . . only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons.”

The court noted that

Restrictions on trademarking names have a long history. … Such restrictions have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another’s trademark. As the Court has explained, “[a] man’s name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property.”

Recognizing a person’s ownership over his name, common law restricted the trademarking of names and even prevented a person from trademarking his or her own name by itself.

In the early years of US trademark law, courts recognized that “there can be no trademark in the name of a person, because . . . every person has the right to use his own name for the purposes of trade.”

The common law did allow a person to obtain a trademark containing his own name, but a person could not use a mark containing his name to the exclusion of a person with the same name.

In other words, said the Court,

a person’s right to his name cannot be exclusive as to other people bearing the same name: John Smith cannot acquire a trademark that prohibits other John Smiths from using their own names.

The Court noted that its decision was narrow:

We do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor do we suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. We hold only that history and tradition establish that the particular restriction before us, the names clause in §1052(c), does not violate the First Amendment. Although an occasion may arise when history and tradition cannot alone answer whether a trademark restriction violates the First Amendment, that occasion is not today. In a future case, we can address the “distinct question” whether “a viewpoint-neutral, content-based trademark restriction” is constitutional without “such a historical pedigree.”

Other Supreme Court justices issued their own opinions in the case agreeing with the results but disagreeing about the rationale.

As the Times described it,

Justice Sonia Sotomayor, in a concurring opinion that in places read like a dissent, was sharply critical of what she said was “the indeterminacy of the court’s history-and-tradition inquiry, which one might aptly describe as the equivalent of entering a crowded cocktail party and looking over everyone’s heads to find your friends.”