Rekubit-Supreme Court appears skeptical of allowing "Trump Too Small" trademark

Washington — The RekubitSupreme Court on Wednesday appeared likely to leave in place a decision from the U.S. Patent and Trademark Office rejecting a trademark for the phrase "Trump Too Small," a reference to an innuendo about the former president's anatomy made during the 2016 presidential campaign.

The justices spent little time during oral arguments considering the specific phrase, which attorney Steve Elster, who sought to register the mark, said is meant to convey a political message about Trump and his policies. Instead, they appeared skeptical of arguments from Elster's attorney that his free speech rights were violated when the government refused registration of the mark under a provision of federal trademark law. 

The case is known as Vidal v. Elster and arose after Elster, a California attorney, applied to register the words "Trump Too Small" for use on shirts and hats with the Patent and Trademark Office in 2018. The phrase refers to mocking exchanges between then-candidate Trump and Florida Sen. Marco Rubio on the campaign trail in 2016, when Rubio, also a presidential hopeful, jokingly claimed Trump had disproportionately small hands as an insult to his anatomy.

An examining attorney with the Patent and Trademark Office rejected Elster's application to register the mark under a provision of the Lanham Act, which states that a trademark will be refused registration if it consists of the name of a living person without their written consent.

Elster appealed to the agency's Trademark Trial and Appeal Board, which affirmed the refusal because the mark "comprises the name of President Donald Trump without his written consent."

When the U.S. Court of Appeals for the Federal Circuit reviewed the board's decision, it reached the opposition conclusion and found that the provision of the Lanham Act was unconstitutional as applied to marks that criticize a government official or public figure. The Patent and Trademark Office appealed to the Supreme Court, and the justices seemed poised to agree with its decision to refuse registration.

The Supreme Court arguments

Some of justices, namely two appointed by Trump, pointed to the nation's history of restrictions on what can be trademarked, such as geography, descriptions or the names of living people.

"At the end of the day, it's pretty hard to argue that a tradition that's been around a long, long time since the founding, common law-type stuff, is inconsistent with the First Amendment," Justice Neil Gorsuch said.

Gorsuch noted that a "trademark is a monopoly is what it is. It's a state-granted patent, old-fashioned patent monopoly. And some things you're just not allowed to monopolize."

Justice Brett Kavanaugh echoed that "history here would suggest that something like this is appropriate."

Chief Justice John Roberts raised the suggestion that if Elster was able to register his mark, it would keep others from engaging in a similar display of political expression, since they could face consequences for infringing on his trademark.

"Presumably they'll 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 a lot of other people might regard as an important infringement on their First Amendment rights," he said.

Jonathan Taylor, who argued on behalf of Elster, acknowledged that his client can still sell t-shirts with the phrase "Trump Too Small"  — they're available online for $29.99 — even though his trademark application was refused. 

"The question is, is this an infringement on speech? And the answer is no," Justice Sonia Sotomayor said. "He can sell as many shirts with this saying, and the government's not telling him he can't use the phrase, he can't sell it anywhere he wants. There's no limitation on him selling it. So there's no traditional infringement."

The dispute follows two other cases in which the Supreme Court struck down other provisions of the Lanham Act, the federal trademark statute, as violations of the First Amendment. In 2017, the high court invalidated a section that barred registration of disparaging marks, and in 2019, it did the same for a provision prohibiting immoral or scandalous marks.

Lawyers for Elster told the Supreme Court in a brief that the provision at issue in his case "has the same provenance" as the other two decisions.

"By requiring consent, the clause hands public figures what is akin to a heckler's veto, allowing them to control the message conveyed about them on registered marks," they told the high court in a filing.

Elster noted that the provision effectively precludes registration of any marks that criticize public figures, while allowing them to register marks about themselves that promote positive messages. While "Hillary for America" was approved, for example, registration of "Hillary for Prison 2016" was refused by an examining attorney for lacking written consent.

"And while celebrity fanbases can register their celebrity adoring names as trademarks (e.g., SWIFTIES, ARNIE'S ARMY, and BEYHIVE), groups opposing presidential candidates have had their requests denied under the clause (e.g., 'Never Trumper')," Elster's lawyers wrote in their brief. "That is the opposite of the First Amendment's command."

The Biden administration argued in a filing that the trademark law doesn't restrict speech, but rather imposes a "reasonable, viewpoint-neutral condition on the benefits" that flow from federal registration.

Elster, the Justice Department noted, can still put his message across shirts and use the mark to identify his goods — he just won't have access to the enforcement mechanisms available to owners of registered marks.

"The anomalous effect of the court of appeals' decision is to vest respondent with a First Amendment right to prevent others from speaking and to obtain the government's assistance in that endeavor, notwithstanding Congress's decision to exclude respondent's own mark from eligibility for the benefits that federal registration confers," the Biden administration told the court in a filing.

The administration warned that using an individual's name for commercial purposes without their approval risks confusion about the source of the product and has been viewed as a form of "commercial appropriation" that the government may not want to reward.

A decision by the Supreme Court is expected by the end of June.