Why ‘Trump too small’ could be a big deal for the Trademarks Act

Former US president Donald Trump hasn’t enjoyed the best start to the summer.

Not only does he hold the dubious distinction of becoming the first-ever president in US history to be impeached twice,  Trump found out in early June that he would be indicted on 37 federal felony counts.

Consequently, the controversial politician marked his birthday yesterday, June 14, facing a litany of charges in a Miami federal court, including the willful retention of national defence information, making false statements and representations, and conspiracy to obstruct justice.

That’s not all. While the former POTUS may have other things on his mind than IP matters, he is unlikely to be happy that a crude slogan, ‘Trump too Small’ that drew his ire nearly seven years ago is once again back in the spotlight.

Just before the felony charges were confirmed, the US Supreme Court (SCOTUS) announced it would review the US Patent and Trademark Office’s ( USPTO) challenge of a ruling that overturned its decision refusing to grant a registration for the phrase.

Arising from a playground-style spat between Trump and Senator Marco Rubio during the 2016 presidential election, the phrase ‘Trump too Small’ gained traction as a derogatory slogan among Trump’s opponents.

During a bawdy exchange, Rubio claimed that Trump had “small hands” and added that “you know what they say about men with small hands”, prompting Trump to assert that “there is no problem”.

As  Mark Simpson, partner at Saul Ewing, points out: “The phrase bothers him and it’s a means of trolling him, and the First Amendment under the US Constitution doesn’t prevent trolling.”

But as debate over the phrase lands at the country’s highest court, it has undoubtedly ruffled feathers in trademark circles, with the USPTO holding that the Federal Circuit’s decision directly conflicts with central tenets of the US primary federal trademark statute of law: the Lanham Act.

Power of the First Amendment

The case emerged when California-based lawyer and activist Steve Elster tried to register the trademark ‘Trump Too Small’, so he could put it on shirts and hats as part of his efforts to oppose and undermine Trump’s politics.

But the USPTO later dismissed the application on the ground that the mark contravened the Lanham Act by including the surname of a living individual without his knowledge or permission.

Under the act, section 2(a) prohibits registering a trademark that falsely suggests a connection with a person, while section 2(c) of the act prohibits registering a trademark that consists of a name identifying a particular individual without that person's consent.

Elster has since  insisted in court that this is a battle over who has the right to criticise politicians in the marketplace, and that the office has burdened political speech “by granting public figures a monopoly over speech about them in the marketplace”.

The US Court of Appeals for the Federal Circuit favoured this stance last year, ruling that a refusal to register the mark unconstitutionally restricted free speech, protected by the First Amendment of the US Constitution.

And opinions are divided: some argue that the time is nigh for a timely reassessment of the act’s section 2 (c) as it may hamper free speech when it comes to public figures.

Others say that the appeals court’s action in granting a trademark registration for this political slogan for t-shirts could potentially constrict the ability of others to express their own opinions in the same way—and could, potentially, lead to further erosion of the Lanham Act’s provisions.

Is history on Elster’s side?

At first glance, SCOTUS case law seems to be overwhelmingly on Elster’s side in light of two judgments handed down in the past decade that tackled similar First Amendment issues.

In Matal v Tam, (2017), SCOTUS unanimously affirmed the Federal Circuit’s decision that “the provisions of the Lanham Act prohibiting the registration of trademarks that may ‘disparage’ persons, institutions, beliefs, or national symbols with the USPTO violated the First Amendment”.

Stemming from musician Simon Tam’s decision to dub his dance-rock band, The Slants—in a bid to “reclaim” Asian stereotypes— the USPTO refused registration, interpreting the mark as a slur offensive to the Asian-American community. But SCOTUS proceeded to uphold the Federal Circuit’s decision to reverse the decision on constitutional grounds.

Two years later, SCOTUS invalidated a provision of federal trademark law that prohibited “immoral or scandalous” marks in Iancu v Brunetti (2019).

In that case, artist Erik Brunetti set up a fashion line featuring the mark 'FUCT', which he said stood for ‘Friends U Can't Trust’. When the USPTO rejected the mark based on its “vulgar” and “decidedly negative sexual connotations”, the appeals court favoured Brunetti—a decision once again affirmed by SCOTUS.

For Simpson, such cases show the power of the First Amendment when it is cited in trademark cases.

“Tam and Brunetti show that free speech in the US is alive and well,” he reflects.

“The ‘Trump too Small’ case is really interesting because it does have First Amendment aspects to it, and it also gets to the heart of what the Lanham Act is really about: protecting consumers from confusion.”

He argues that, in essence, the critical question is: are people going to think that Donald Trump is the source of these products that cast negative implications on his manhood? Simpson’s answer: probably not.

“So the confusion issue that the Lanham Act is intended to prevent simply isn't there, nor is there a question over whether Trump endorsed the product,” he explains.

“People are not going to think that Trump is putting out products that, in his eyes, are disparaging of him.”

He goes further, arguing that he hopes the case could preempt a timely reconsideration of the Lanham Act’s provisions outlined in Section 2(c).

“At the moment, this is something that needs to be fixed because it is impinging on someone's ability to say something they want to. What’s more, it doesn't appear to me to be harming any value Trump gets from his name because people aren't going to think he’s endorsing the slogan.”

One potential outcome, he suggests, is that SCOTUS could ask Congress to tweak the statute, section 2 (c) “so it can at least be clarified that you can sometimes use a person's name as long as it's not likely to confuse”.

What’s more, as Finnegan partner  Mark Sommers observes: this particular case diverges from Tam and Brunetti in one crucial aspect.

“Based on the Court’s prior decisions, it would be reasonable to assume that the Supreme Court would similarly strike down the provisions of Trademark Act Section 2(c) that are at issue in Vidal v Elster,” he reflects.

But as he notes, the Lanham Act bars registration of the mark, ‘Trump too Small’ not because of what Elster said, but because he sought to enlist the publicity of another well-known public figure.

Now, he adds that the Supreme Court has a fresh “opportunity to distinguish the section”.

Elster’s argument ‘makes no sense’

However,  Lisa Ramsey, professor of law at the University of San Diego, is less sanguine.

Bypassing the Lanham Act in its current form and granting trademark rights for ‘Trump too Small’ would, she believes, ultimately constrain the expression of others.

“The Federal Circuit did not take into account the fact that granting a trademark registration for this political slogan for T-shirts would chill expression by competitors and others who might want to use this phrase in the same way as Elster.”

Elster’s argument that the office has burdened free speech, she argues, simply “makes no sense”.

“Elster is the one seeking the exclusive trademark right to use this political slogan in connection with the advertising and sale of T-shirts.”

Further, Ramsey believes that if the US’ highest court once again decides to affirm the Federal Circuit’s stance on the First Amendment, it could potentially undermine yet more of the Lanham Act’s provisions.

“If the court strikes down this law as an unconstitutional regulation of non-misleading expression… the next question is what other provisions of the Lanham Act may be deemed unconstitutional regulations of speech under the First Amendment,” she explains.

One example, she adds, is the trademark registration law that bans the registration of subject matter that may dilute a famous mark by blurring or tarnishment. Another, she suggests, is the law banning the registration of flags and other government symbols.

Of course, this isn’t the first trademark case to touch upon First Amendment safeguards this year.

Pointing to the high-profile Bad Spaniels opinion published on June 8—in which Jack Daniel’s prevailed against a toy maker that claimed that its dog toy was a parody and constitutionally protected—Ramsey notes that a great deal of uncertainty still remains.

“The court did not provide guidance on how to determine whether  viewpoint-neutral trademark laws are consistent with the First Amendment, so it is not clear how the court will resolve the Elster case,” she says.

She does, however, note that the court was focused on the fact that trademarks should identify the source of goods or services and that the one goal of trademark law is protecting this source-identifying function of trademarks.

Quite simply, a trademark is deemed as any word, phrase, symbol, design, or combination of these things that identifies a single source forcertain products or services.

On that basis alone, political slogans often fail to function as trademarks for T-shirts and other types of expressive merchandise.

“Registering political slogans like ‘Trump Too Small’ for T-shirts is not consistent with trademark law’s goals, so that is why I hope the court will approve the use of failure to function doctrine at some point,” adds Ramsey.

A politically charged climate

But even if Elster does triumph at SCOTUS, he may still struggle to circumvent the USPTO.

As Ramsey explains: “Regardless of whether the Supreme Court decides in Elster that Section 2(c) of the Lanham Act is unconstitutional on its face or as applied to this political speech, there is still a significant chance the USPTO will refuse to register this political slogan as a mark for T-shirts on the ground it is merely informational, expressive, or ornamental matter that fails to function as a source-identifying trademark.”

While opinion remains divided about the eventual outcome of this case, Simpson predicts that similar cases tackling trademarks and the First Amendment are somewhat inevitable given the febrile political atmosphere in the US.

“There's a lot of vitriol being thrown around; people are expressing their opinions in loud ways. If you’ve ever watched a Trump rally, it's like a carnival.”

Indeed, as SCOTUS gears up to mull the arguments in this case, it seems that the USPTO and trademark lawyers should be primed for the applications for more memorable off-colour phrases to be trademarked—and weaponised.

Simpson concludes: “We’ve seen that people use certain phrases as ways of trolling such figures because they know that this annoys them— I wouldn’t be surprised if we see more of that.