‘Trump Too Small’ High Court Fight Targets Another Trademark Ban

The US Supreme Court surprised some trademark attorneys when it agreed to consider why a trademark application for “Trump Too Small” shouldn’t fell a statutory registration ban on free speech grounds—after “The Slants” and “FUCT” each toppled similar restrictions.

The US Patent and Trademark Office this week convinced the justices to hear its bid to revive the Lanham Act’s bar against registering trademarks that identify a living person without their consent. Now it must successfully distinguish that provision from bans against disparaging and vulgar registrations that the Supreme Court recently struck down as unconstitutional.

The US Court of Appeals for the Federal Circuit in 2022 cited the same First Amendment grounds—along with the high court’s 2017 Matal v, Tam and 2019 Iancu v. Brunetti decisions—to reverse the agency’s refusal to register “Trump Too Small.” The central question will be whether the government can fundamentally differentiate the identity provision from the invalidated disparaging and vulgar ones.

“Because the trademark does convey a political message, it’s understandable why the applicant would categorize this as a First Amendment issue, and might think that after Brunetti and Tam that the wind is at their back,” intellectual property attorney Martin Schwimmer of Leason Ellis LLP said.

Schwimmer and others see at least some potential for separation. IP law professor William McGeveran of the University of Minnesota said the provision barring unlicensed use of a name arguably has a stronger relationship with “the Lanham Act’s core purpose rather than a moral idea” like vulgarity or disparagement.

But there are a number of angles from which the court could approach a case that nominally deals with just one of many overlapping provisions and principles. McGeveran said the Supreme Court likely will rule similarly to Tam and Brunetti, but added, “trying to say what the Supreme Court is up to from these signs is Kremlinology.”

IP law professor Jennifer Rothman of the University of Pennsylvania said the Supreme Court will likely reverse the Federal Circuit because the ban on names doesn’t invoke the “viewpoint discrimination” that Tam and Brunetti turned on.

“There are actually three potential bars if you use someone else’s name. I’d like to see them analyzed in conjunction,” Rothman said, noting that the case doesn’t “tee up consideration” of two of them. “I don’t know how broadly they’ll rule on it.”

Statutory Overlap

In Tam, an Asian-American band convinced the Supreme Court that the provision in Section 2(a) of the Lanham Act, barring it from registering “The Slants” because it was “disparaging,” constituted viewpoint discrimination. Two years later the court struck a different part of 2(a) barring “immoral” or “scandalous” marks, letting designer Erik Brunetti register “FUCT” for a clothing line.

In between those two decisions, attorney Steve Elster filed an intent-to-use application to register “Trump Too Small” for clothing. The examiner cited another 2(a) prohibition on marks that “falsely suggest a connection with persons, living or dead,” as well as 2(c), which bars marks that “identify a particular living individual except by his written consent.”

The Trademark Trial and Appeal Board concurred on 2(c) and, with the refusal already affirmed, declined to analyze 2(a). That prevented the Federal Circuit from analyzing 2(a); it held only that 2(c), “as applied” to this case, was unconstitutional.

IP law professor Rebecca Tushnet of Harvard University said it was unsurprising the court took up a case striking at federal law, and that it doesn’t mean the Supreme Court disagrees with the Federal Circuit. She said the appeals court “did exactly what it was supposed to under Tam and Brunetti.”

She also said that while she didn’t think the court should have struck down the disparagement bar, it only makes sense that 2(c) also must fall.

“It would be appalling to say ‘it’s ok to disparage groups of people but it’s not ok to criticize specific people,’” Tushnet said. Because 2(a) also bars false suggestion of a connection, she said, “the only extra function of 2(c) is where there’s not a false association—where there’s criticism.”

McGeveran said that sort of overlap wasn’t necessarily out of place in trademark law. “If we start going through parts of the Lanham Act that would be superfluous, we would be here all day,” he said.

Nevertheless, he said, the court likely wouldn’t find the broad ban on names “justifiable,” and that confusion can be sufficiently addressed by other restrictions like 2(a) and right of publicity laws.

Rothman, meanwhile, said she’s “pretty sure the Supreme Court will reject any facial challenge” to the law. But she also said the case doesn’t really even tee up that question because it only addressed the constitutionality of the law “as applied” to the particular application.

“The application is an intent-to-use, so the Patent and Trademark Office has not considered whether the claimed mark actually rises to the level of a protectable mark,” Rothman said. “I think 2(c) is going to be held constitutional, but it’s unclear what route they will take to get there.”

What’s the Standard?

More fundamentally, courts haven’t clearly decided the proper standard for weighing trademark registration restrictions against First Amendment rights. Neither Tam nor Brunetti decided whether they should be analyzed under a strict scrutiny standard or the looser “intermediate scrutiny,” finding the provisions at issue failed either standard.

One could have argued trademarks have nothing to do with speech beforeTam and Brunetti, IP attorney Michael S. Palmisciano of Sullivan & Worcester LLP said. The opinions didn’t get “to the heart of” defining what a grant of a registration means from a First Amendment perspective, leaving questions about what can be referenced, he said.

“Can Ford register ‘We are better than Tesla?’ ‘Tesla Sucks?’ It just seems we don’t make speech carveouts,” Palmisciano said. “I think the proper analysis is, ‘Someone owns a trademark in Tesla, so you can’t have anything that incorporates that.’ We don’t go there.”

Rothman said the 2(c) ban “would likely withstand scrutiny of any level” because it’s veiwpoint-neutral. That could let the court sidestep deciding the proper standard for analyzing trademark registration laws or whether registrations constitute a government subsidy subject to a lower level of scrutiny.

“I think they can avoid the government benefit question that the Patent and Trademark Office might like them to address,” Rothman said. “But they might surprise me. They surprised me by granting cert. in this case.”

Form Over Function

Rothman also said free speech arguments can cut both ways because trademark rights, by design, restrict the speech of non-rightsholders. Even though such rights can only block use of a mark as an identifier of the source of the product, they can still have a chilling effect, especially on clothing, she said.

“If it would stop others from selling t-shirts, that would raise a different First Amendment problem,” she said.

Marks on clothing raise different possible grounds for refusal—failure to function as a trademark. That basis hasn’t come up in Elster’s case because his involved an intent-to-use application, which doesn’t require an example of use. But the PTO routinely rejects marks for relaying a message to consumers, not who made the product.

“Most of these putative marks aren’t good trademarks because they carry so much extra meaning,” Tushnet said. “The more it functions as a message, the less likely it is to function as a trademark.”

Given the various alternate grounds the agency could have for refusing “Trump Too Small,” as well as other Lanham Act and right of publicity law protections for the interests at issue, many practitioners say the legal debate outstrips the case’s practical import.

“I am skeptical, if we zoom out, that this is a big issue,” Palmisciano said. “It’s a constitutional issue, but out in practice, this isn’t something that comes across my desk very often.”

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