Supreme Court rejects ‘Trump Too Small’ trademark

By Devan Cole and John Fritze, CNN

(CNN) — The Supreme Court on Thursday rejected a political activist’s attempt to trademark the phrase “Trump Too Small,” saying the federal trademark office did not violate the First Amendment when it declined to register the mark.

Justice Clarence Thomas wrote the majority opinion for a unanimous court.

“Our courts have long recognized that trademarks containing names may be restricted. And these name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause — a content-based, but viewpoint-neutral, trademark restriction — is compatible with the First Amendment,” Thomas wrote, referring to a provision of the federal trademark law at issue in the case.

“We conclude that the names clause is of a piece with a common-law tradition regarding the trademarking of names,” he added later. “We see no reason to disturb this longstanding tradition, which supports the restriction of the use of another’s name in a trademark.”

The dispute can be traced back to a memorable squabble between then-candidate Donald Trump and Florida GOP Sen. Marco Rubio during the 2016 Republican presidential primary, in which the senator joked about the size of Trump’s hands ahead of a debate and said, “You know what they say about men with small hands.”

Trump shot back during the debate, stretching his hands out for the audience to see and insisting Rubio’s suggestion that “something else must be small” was false.

“I guarantee you, there’s no problem,” Trump said at the time.

A host of headlines ensued, including one from CNN that read, “Donald Trump defends size of his penis,” and another from Vanity Fair that said: “Donald Trump Assures America He is Well-Endowed.”

Two years later, attorney Steve Elster sought to register “Trump Too Small” as a trademark for use on T-shirts. He said in his registration request that the proposed trademark aims to “convey that some features of President Trump and his policies are diminutive.”

“The mark criticizes Trump by using a double entendre, invoking a widely publicized exchange from a 2016 Republican primary debate in which Trump commented about his anatomy, while also expressing Elster’s view about ‘the smallness of Donald Trump’s overall approach to governing as president of the United States,’” attorneys for Elster told the justices in court papers.

Federal law bars people from registering a trademark of a name of a living person without their consent. The US Patent and Trademark Office refused registration because the use of the name “Trump” would be construed by the public as a reference to the former president. The question for the Supreme Court was whether the prohibition could be squared with the First Amendment. Elster appealed to the USPTO’s Trademark Trial and Appeal Board, which also refused registration. A federal appeals court, however, later held that the refusal violated Elster’s First Amendment rights.

Justices differ on reasoning

Justice Amy Coney Barrett, in a concurring opinion, said she agreed with the court’s decision but not its reasoning. Thomas relied heavily on the nation’s history and tradition with trademark law to settle the case. Barrett said it could have been dealt with based on the court’s past precedent.

“The government can reasonably determine that, on the whole, protecting marks that include another living person’s name without consent risks undermining the goals of trademark,” Barrett wrote, in an opinion that was joined in part by the court’s liberal wing. The bar on trademarking someone else’s name, she wrote, “is therefore constitutional, both facially and as applied” to this case.

Justice Sonia Sotomayor similarly wrote in a concurrence joined by the court’s other two liberals that she would have applied the court’s First Amendment precedent to decide the case. She said she was “reluctant” to go down the path chosen by Thomas and her other colleagues.

The provision of federal trademark law upheld in the case, Sotomayor wrote, “is constitutional because it is a viewpoint-neutral, reasonable limitation on a trademark’s registration.”

At oral arguments, the justices seemed inclined to side with the trademark office, with several raising doubts that Elster’s free speech rights had been trampled on by the agency. Nothing stopped Elster from making or selling the T-shirts.

“The question is: Is this an infringement on speech? And the answer is no,” Sotomayor said at one point. “There’s no limitation on him selling it. So there’s no traditional infringement.”

Thomas similarly posited that if Elster’s “argument is that somehow your speech is being impeded, I think it would be good to know precisely how it’s being impeded or burdened.”

In two recent cases, the court bolstered First Amendment protections when it declined to back decisions by the USPTO to deny trademark registrations based on other parts of the Lanham Act.

In 2017, the court ruled in favor of Simon Tam, an Asian-American musician and political activist who named his rock band “The Slants” in an attempt to take back a term that once was directed as an insult. He sought to register the name with the trademark office but was turned away on the ground that it is disparaging to “persons of Asian descent.”

Two years later, the justices struck down a provision of the Lanham Act that prohibited the agency from registering “immoral” or “scandalous” trademarks, clearing the way for a clothing designer to apply for a trademark for a clothing line called “FUCT.”

This story has been updated with additional details.

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