‘Trump Too Small’ Fight Splits First Amendment Trademark Views

A dispute over a “Trump Too Small” trademark application hinges on whether a statutory ban offends the First Amendment, as the US Supreme Court recently found two other restrictions did.

Recent friend-of-the-court briefs filed at the US Supreme Court spar over whether a Lanham Act provision barring marks “identifying a living individual” without their consent fundamentally differs from stricken bans on disparaging or vulgar marks. The high court struck down those statutory provisions in 2017 and 2019 cases involving bids to register “The Slants” and “FUCT,” respectively.

Groups, like the International Trademark Association, that support the ban say—unlike in those cases—this prohibition is “viewpoint-neutral” and should be upheld. But backers of applicant Steve Elster, including the American Intellectual Property Law Association, say even if it’s neutral on its face, the ban is discriminatory in practice: referenced parties—including public figures—will favor laudatory marks over critical ones.

The case also revives a broader debate about how the First Amendment applies to trademark registration in the first place. Registration isn’t required to assert trademark rights, nor can an owner use one to block non-commercial speech. But—as the high court found in 2017’s Matal v. Tam and 2019’s Iancu v. Brunetti—registration carries legal advantages that mean decisions can still constitute the government favoring speech.

AIPLA said at the very least, in this instance, the US Patent and Trademark Office’s application of the ban in Section 2(c) of the Lanham Act—if not the provision itself—was unconstitutional.

“While Section 1052(c) does not constitute a presumptively unconstitutional, viewpoint-based restriction, the USPTO’s application of that provision here was nonetheless fatally flawed,” the AIPLA brief said. “The government has failed to present any substantial government interest justifying the content-based restriction of speech that resulted from this application of the statute.”

But the trademark association countered that the provision simply applies long-recognized right of publicity principles—the right to control commercial use of one’s name—to everyone, including public figures. It also contested the US Court of Appeals for the Federal Circuit’s assertion that such rights “cannot shield public figures from criticism,” arguing that enforcing trademarks restrains speech more than denying registration.

“Section 1052(c) does not shield anyone from criticism since the USPTO’s refusal of registration does not constrain respondent’s ability to engage in any form of public commentary,” INTA said in its brief. “In fact, it is the registration of marks like respondent’s—not the refusal to register them—that would potentially ‘chill speech.’”

‘Upside-Down Approach’

Elster applied to register his mark to cover shirts in 2018, about seven months after the high court issued Tam. A trademark examiner replied the next month that the mark required Trump’s consent, and later also refused it on the grounds that it falsely suggested an association with Trump, which is prohibited in Section 2(a).

The Federal Circuit reversed the refusal in February 2022. Tam and Brunetti didn’t control the case, as Elster acknowledged that Section 2(c) didn’t involve viewpoint-discrimination. But the court nevertheless said the refusal to register the mark did constitute unjustified content-discrimination. Elster only challenged the law as applied to his mark, but the court said most applications would also produce unconstitutional restrictions on free speech.

A brief by the Foundation for Individual Rights and Expression and the conservative think tank Manhattan Institute noted that Brunetti reiterated Tam‘s holding that a “core postulate of free speech law” is that government can’t “discriminate against speech based on the ideas or opinions it conveys.” Section 2(c)'s consent requirement “incorporates an inherent bias against critique and disproportionately burdens critical messages,” the brief said.

The brief also said bias against critical marks is the provision’s only function because Section 2(a)'s ban on registrations that “falsely suggest a connection with persons” will filter out all deceptive references. That “inverts the normal hierarchy of First Amendment protections” by giving less protection to criticism of the most famous public figures.

“Such an upside-down approach subverts the prized American privilege to criticize public figures and cannot stand up to the First Amendment,” the brief said.

Double-Edged First Amendment

The result of the case also could carry broader implications for the interplay of publicity rights and the First Amendment, the Motion Picture Association said. Too much deference to publicity rights could drive more litigation over movies about real people than already exists, its brief said, and the justices should emphasize that the First Amendment comes first.

“Regardless of who prevails in this case, the court should make clear that the right of publicity cannot be used to silence or deter production of expressive works,” the MPA said.

Other groups argued allowing Elster’s mark would harm the First Amendment rights of others. Consumer rights think tank Public Citizen said the First Amendment “does not require registration” of the phrase because Elster is using it to express a message rather than as a trademark identifying the source of his goods. Registration would merely help him block others from expressing similar sentiments, the group argued.

“The First Amendment would not tolerate the enforcement of such a trademark against other people’s expressive use of language similar to ‘Trump Too Small,’ and by the same token it bars a federal agency from giving respondent a limited monopoly in that core political speech,” the brief said.

Matthew A. Handal, an owner of other Trump-critical trademark applications, said the court didn’t have to reach the constitutional question because “Trump Too Small” should’ve been rejected as ornamental, not an indicator of who made the shirts. He said ambiguity in the phrase also arguably creates a false association.

But if the court decides the fate of Section 2(c), he said, it should find the restriction chills political speech and strike it as unconstitutional.

Heightened Scrutiny?

The case provides another chance for the high court to ponder whether registration is a “condition on a government benefit or a simple restriction on speech,” as the high court phrased the quandary in Brunetti. The justices said that “no majority emerged” on the question, but also decided there and in Tam that they didn’t have to answer it to invalidate the bans.

In Tam the court found “disparagement” to be viewpoint discriminatory, requiring at least intermediate scrutiny—the government had to show the law blocking registration of “The Slants” as the name of an Asian-American band furthered an important interest. The Brunetti decision similarly struck the “scandalous” and “immoral” provisions, allowing registration of a “FUCT” mark for a clothing line.

The Federal Circuit’s “Trump Too Small” opinion also said Section 2(c) warranted—and failed—either intermediate scrutiny or the even the more restrictive strict scrutiny bar.

But the International Trademark Association argued the provision didn’t require any heightened scrutiny because it’s a content-neutral government benefit and refusing registration doesn’t restrain speech.

“Section 2(c) is not viewpoint based because it is agnostic to the message conveyed or the view expressed. Congress did not enact Section 2(c) to limit criticism of public figures,” INTA’s brief said. “The purpose of the statute is to harmonize trademark law with a person’s right of privacy and publicity.”

But a brief by Samuel F. Ernst, a Golden Gate University IP law professor, argued the high court had held that speech regulation targeting subject matter is content-based even if it doesn’t discriminate within the topic.

Quoting a 2015 case striking restrictions on the manner—but not viewpoints—of displaying outdoor signs, Ernst said viewpoint discrimination is a “more blatant and egregious form of content discrimination,” but still requires strict scrutiny. He called Section 2(c) “even more odious.”

Its “de facto” discrimination, he said, “burdens critical political commentary while incentivizing propaganda.”

The case is Katherine K. Vidal v. Steve Elster, U.S., No. 22-704.