SCOTUS told that: ‘Trump too small’ TM ban has ‘staggering implications’

Activist urges court to dismiss USPTO appeal in clash concerning the First Amendment and the Lanham Act | Slogan described as “political commentary” targeted at former president Trump that shouldn’t require his consent.

Political activist and lawyer Steve Elster has filed a brief with the US Supreme Court, marking the latest development in his long-running campaign to register the mark ‘Trump too small’ as a slogan for T-shirts.

In June, 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.

Elster first sought to register the words for use on T-shirts in order to challenge and undermine former President Donald Trump and his policies.

The brief, filed this week on September 5, outlines how Elster submitted a trademark application on the basis that the phrase—which is accompanied by an illustration of a derogatory hand gesture—is “political commentary” targeted at the controversial politican.

“The mark criticises Trump by using a double entendre, invoking a widely publicised exchange from a 2016 Republican primary debate in which Trump commented about his anatomy, while also expressing Elster’s view about ‘the smallness of Donald Trump’s overall approach to governing as president of the US,’” says the brief.

Consent barrier

But the office dismissed Elster’s 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) prohibits registering a trademark that consists of a name identifying a particular individual without that person's consent.

The US Court of Appeals for the Federal Circuit later faulted this decision, holding that a refusal to register the mark unconstitutionally restricted free speech, protected by the First Amendment of the US Constitution.

In his brief, Elster notes that “this case marks the third time in six years that this court must decide whether a statutory restriction on trademark registration satisfies the First Amendment”.

In the first two cases, he points out that the court invalidated the provisions of the Lanham Act barring registration of disparaging marks in Matal v Tam (2017), and immoral or scandalous marks in Iancu v Brunetti (2019).

“It did so because those provisions targeted private speech for disfavoured treatment based on its message. The provision here has the same provenance as those in Tam and Brunetti.

“It bars the registration of any mark ‘identifying a particular living individual’ without their written consent…”

Elster further argues that by requiring consent, the provision “effectively precludes the registration of any mark that criticises public figures—even as it allows them to register their own positive messages about themselves”.

First Amendment clash

The Federal Circuit, he says, “correctly held that the names clause is unconstitutional” as applied to the mark in this case.

“Its text imposes a content-based and speaker-based burden on speech,” he adds, “because its ‘purpose and practical effect’ are likewise aimed at suppressing unwanted speech and skewing the debate about public figures”.

Elster points out that the USPTO has interpreted the names clause so that its only practical effect is to cover non-deceptive marks about “celebrities and world-famous political figures”.

In his view, the clause now verges on viewpoint discrimination, because “no one would ever consent to the registration of speech that insults them”, and that it “effectively precludes the registration of all marks that disparage or criticise living people”.

He continues: “No legitimate governmental interest justifies the law’s content-and speaker-based regulation of speech.”

The brief proceeds to outline how the clause was first enacted in 1946 to suppress speech that Congress deemed to be “distasteful”.

“And its effect has been to do exactly that: blocking registration of all marks that criticise public figures, while leaving those people free to register their own positive marks.

“It is difficult to imagine a rationale that more squarely collides with the First Amendment—or that more clearly proves that the law is aimed at speech,” the filing says.

Publicity rights

Elster also criticises the government’s claims that the purpose of the names clause “is grounded in [the] historical tradition” of the publicity right, arguing that such a reliance on that tradition is “misplaced”.

“The right has never been applied to support a cause of action for criticism of a public figure. As the Federal Circuit points out, ‘no authority holds[s] that public officials may restrict expressive speech to vindicate their publicity rights’.”

The brief cautions that because trademarks exist to convey messages through commerce, the government “is not just prohibiting speech on a single government register”, but is also imposing “a significant burden on speech” between companies and potential customers across the marketplace”.

It further warns: “If the registration system were a limited public forum, the same would have to be true of copyright—with potentially staggering implications.”

Deepak Gupta and Jonathan Taylor, principals at Gupta Wessler, filed the brief on behalf of Elster, which concludes by urging the court to affirm the Federal Circuit’s decision.

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