28 February 2022TrademarksAlex Baldwin

Fed Circ says ‘Trump too small’ should be registered

The US Court of Appeals for the Federal Circuit has reversed a Patent Trial and Appeal Board (PTAB) decision that the trademark “Trump too small” cannot be registered as it is “unconstitutional”.

The decision, handed down Thursday, October 24, held  that the mark should be approved for registration, in a case that considered the breadth of government oversight into registered trademarks and denials on first amendment grounds.

Steve Elster sought to register the phrase to be printed on clothing under the Nice Agreement Clase 25.

According to Elster, the phrase relates to a “memorable exchange” between President Trump and senator Marco Rubio from a 2016 presidential primary debate.

The US Patent and Trademark Office (USPTO) examiner initially rejected the mark on the grounds that the marks containing a person's name cannot be registered without the written consent of the individual.

Elster’s argument that the mark was “political commentary” and denial that the mark infringed the former president’s first amendment rights did not sway the examiner.

In a separate decision, the office also denied registration on the grounds of Section 2(a) of the Lanham Act’s “false association clause”, which prevents marks being registered that “falsely suggest a connection with persons, living or dead”.

Both decisions consolidated in an appeal to the PTAB, arguing that Sections 2(c) and 2(b) constituted “impermissible content-based restrictions on speech”. He claimed that neither provision should be “narrowly tailored” to serve government interest.

However, the board upheld the USPTO’s examiner’s denial of the mark, resting its decision on finding the mark’s incompatibility with Section 2(c), while not addressing rejection under Section 2(a).

The board noted that it did not “have the authority” to declare statutory provisions unconstitutional.

On appeal to the Federal Circuit, the panel ruled that the application of Section 2(c) in this case constituted “content-based discrimination” that is not justified by “compelling” government interest.

It referred to Section 2(a) precedent outlined in Supreme Court decisions Matal v Tamn and Iancu v Brunetti, claiming that, while these cases didn’t resolve the Elster’s dispute, they did “establish that a trademark represents a ‘private, not government, speech’” and is entitled to some form of first amendment protection.

“It is well established that speech ordinarily.

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