Washington — The Supreme Court ruled Thursday that the U.S. Patent and Trademark Office did not violate the First Amendment when it refused to register a trademark for the phrase “Trump too small,” saying that a federal law banning trademarks that include the names of others does not violate the Constitution.
The Supreme Court a decision reversed of the U.S. Court of Appeals for the Federal Circuit, which ruled that excluding “Trump Too Small” from registration under a provision of federal trademark law unconstitutionally limited freedom of expression. The ruling rejects a California attorney's attempt to trademark the phrase.
“The history and tradition of restricting trademarks that include names is sufficient to conclude that the Names Clause is compatible with the First Amendment,” Justice Clarence Thomas wrote for the majority.
The court ruled unanimously that the federal ban on trademarks consisting of the name of a living person without their consent does not violate the right to free speech and noted that its decision is limited.
“The names clause of the Lanham Act has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be subject to restrictions,” Thomas wrote. “And these name restrictions served established principles. This history and tradition are sufficient to conclude that the Names Clause – a content-based but position-neutral trademark restriction – is compatible with the First Amendment.”
Justice Amy Coney Barrett, as well as Justices Elena Kagan, Sonia Sotomayor and Ketanji Brown Jackson, separately noted that while they agree on the constitutionality of the so-called names clause, they disagree with some of Thomas's reasoning.
The 'Trump Too Small' Case
The dispute is known as Vidal v. Elster and stems from California attorney Steve Elster's attempt to register the words “Trump Too Small” for use on shirts and hats with the U.S. Patent and Trademark Office in 2018. The phrase refers to an exchange between then-candidate Trump and Florida Senator Marco Rubio during the 2016 race for the White House. Rubio, also a Republican Party presidential hopeful, jokingly claimed that Trump had disproportionately small hands as a veiled insult to his anatomy, prompting Trump to defend his hand size during a televised presidential debate.
Elster said he wanted to register the brand to convey a political message about the former president, who is once again vying for the job, and his “package” of policies.
Steve Elster/US Patent and Trademark Office
An examining attorney at the Patent and Trademark Office denied Elster's application to register the mark, citing a provision of the Lanham Act that prohibits the registration of a mark consisting of the name of a living person without their consent.
An internal appeals committee upheld the rejection, noting that the mark includes Trump's name without his approval. But the Federal Circuit reversed, ruling that the portion of the Lanham Act the Patent and Trademark Office relied on was unconstitutional when it comes to marks critical of a government official or public figure.
Elster's “Trump Too Small” T-shirts are still available online for $24.99, even though his trademark application was rejected.
The Supreme Court's ruling joins a series of other First Amendment challenges to provisions of the Lanham Act, the main statute governing trademarks. The Supreme Court in 2017 a section downed of the law prohibiting the registration of disparaging trademarks did the same for a provision banning immoral or scandalous brands in 2019.
