'Trump too small': SCOTUS can stop being the trademark police’, say lawyers

One of the many lawsuits to arise from Donald Trump’s controversial election campaigns and presidency has finally reached the US Supreme Court. But perhaps not in the way he ever imagined.

During hearings held yesterday, November 1, US Supreme Court justices examined the case Vidal v Elster, which asks whether the US Patent and Trademark Office’s (USPTO) refusal to register a trademark, ‘Trump Too Small’, violated free speech rights.

As lawyers tell WIPR, the justices appeared doubtful about whether the controversial political slogan could qualify as a legitimate trademark.

Maya Tarr, principal at Carob Law, points out: “Based on what I heard, it seems clear that the majority of the justices are leaning toward a decision aligned with the USPTO’s underlying position.”

Background

The hearings arose after the US Patent and Trademark Office’s ( USPTO) challenged a ruling that said the agency had erred in refusing a registration for the phrase.

Following a crude exchange between Trump and Senator Marco Rubio during the 2016 presidential election, the phrase ‘Trump too Small’ gained popularity as a disparaging slogan among Trump’s opponents. Activist Steve Elster later sought to trademark the phrase, which he uses on T-shirts and hats at political rallies.

But the USPTO contended that the Lanham Act bars a trademark that identifies a living individual without that person’s consent.

Elster then argued successfully before the US Court of Appeals for the Federal Circuit that this decision contravened his rights.

However, in comments reported by NBC News, the justices seemed perplexed yesterday about how the refusal could constitute a genuine violation of free speech.

As Justice Sonia Sotomayor noted, there are no actual restrictions on the sales of the T-shirts—regardless of whether the slogan was trademarked or not.

“It doesn’t stop you from selling. It doesn’t stop you from selling anywhere as much as you want,” she said.

Justice Neil Gorsuch also emphasised the historical constraints on marks referring to living people, which had never broached the issue of free speech before.

“Why not just look at the history here and see whether historical evidence comports with this being a First Amendment liberty or not?” he queried.

As Tarr explains, a decision supporting Elster’s position seems increasingly unlikely because it would give the lawyer and lobbyist an exclusive right to the phrase ‘Trump Too Small’ on t-shirts that Elster could then use to limit the free speech of others.

“A decision upholding Section 2(c) of the Lanham Act wouldn’t restrict his ability to use the phrase on t-shirts—it just would prevent him from having an exclusionary right to the phrase,” she adds.

Upholding the status quo

Jennifer Mauri, senior associate at Michelman & Robinson, agrees that the court seems inclined to side with the USPTO.

“If [it does] so, the court will be upholding the status quo and in a large sense, there would not change to how businesses currently operate related to their trademark portfolios,” she says.

“Under the current regime, companies that have an interest in the name of a living person do not really need to concern themselves with a possibility that some entity could register an identifying mark and get presumptive nationwide trademark rights and instead, can rely on the trademark office to reject any efforts to do so,” she explains.

If the court were to side with Elster, she adds, companies would not only have to consider the potential benefits of registering identifying marks that they are using or intend to use, but also whether to defensively seek to register identifying marks that they would want to prevent others from using.

Pointing to a hypothetical example, Mauri notes that if the phrase ‘Smells like Musk’ went viral related to the billionaire Tesla-owner Elon Musk, he would now have to consider whether to apply for trademark registration for that mark in order to prevent someone else from doing so in relation to car accessories.

A potential quagmire

When it comes to the First Amendment, it seems that the court could face perturbing questions regarding its decision in earlier cases if it does reject Elster’s arguments.

Andy Stroud, partner at Hanson Bridgett, believes that the First Amendment argument in this particular case is stronger than the arguments presented in previous cases.

For example, in Matal v Tam, (2017), SCOTUS unanimously affirmed that US-Asian musician Simon Tam’s decision to dub his dance-rock band, ‘The Slants’ was a matter of free speech and rejected the USPTO’s belief that it should be rejected because it was potentially offensive.

As Stroud points out, unlike that case, Elster v Vidal involves political speech, “which is at the core of First Amendment protections”.

“If the court holds that the defence does not work in this case, it is creating an even greater quagmire for lower courts and the USPTO to try and navigate as to when the First Amendment applies and when it doesn’t,” he says.

This is why, argues Stroud, the First Amendment “should never be a defence to the denial of a trademark registration” because “trademarks have nothing to do with free speech”.

“You do not need a trademark to advertise a product or express a political point of view,”  he says.

“The Supreme Court erred in the Tam case when it held that the First Amendment prevented the trademark office from denying registration to the band name ‘The Slants’, because it was offensive to some Asian Americans.

“The reason stated by the justices in today’s hearing, that denial of registration was not an infringement of Free Speech because the Trump t-shirts could still be sold anywhere and everywhere, applies equally to the Tam case.”

That’s why, he concludes, SCOTUS should overturn Tam and “get out of the business of being the trademark police”.