Can Trump’s Little Hands be Trademarked?

By Russell Pigg

A California lawyer, Steve Elster, is attempting to trademark the phrase “Trump Too Small,” a reference to a jab from Marco Rubio at former President Donald Trump during the 2016 presidential campaign. Rubio said Trump had “small hands,” adding: “[a]nd you know what they say about guys with small hands.”

 Elster wanted to use the trademark on the front of T-shirts with criticisms of Trump’s policies and positions on the back such as “small on civil rights.”

 Elster filed for the trademark but the United States Patent and Trademark Office rejected the application citing the Lanham Act: Section 2(c), which prohibits registering a mark that identifies a living individual without their consent, and Section 2(a), which bars marks that falsely suggest a connection with living or dead persons((15 USC §1052 (a) (2022)).

 Elster appealed the rejection of his trademark claiming he has a right to criticize public figures and government officials under the 1st Amendment.

In February 2022, the Federal Circuit held in a unanimous decision that the First Amendment Rights of Elster were violated with the rejection of the trademark (In re Elster, 26 F.4th 1328 (Fed. Cir. 2022)).

The court wrote that since former President Trump is a public figure and since Elster used the trademark in connection with political criticisms, the federal government had no basis for protecting Trump or rejecting the trademark. Public figures are not afforded the same rights as private citizens.

The Biden Administration and Solicitor General Prelogar appealed the Circuit Court’s decisions to the Supreme Court arguing that Elster has the right to freely discuss Trump’s appearance and policies, but could not receive a trademark.

 Giving a trademark to Elster would do the opposite of helping free speech regarding public figures as the trademark would only allow Elster to use it, and not others.

The Court agreed to hear the case and decide whether the PTO must grant the trademark.

In two previous cases in 2017 and 2019, with a very similar Court, the Court favored free speech over federal trademark restrictions.

 In the 2017 case Matal v. Tam (Matal v. Tam, 582 U.S. 218 (2017)), a band called The Slants filed to register their name, but the trademark application was rejected due to the Disparagement Clause of the Lanham Act of 1946, which prohibits trademarks that “[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” (Matal v. Tam, 582 U.S. 218, 227 (2017)).  

The Court, in a unanimous decision, ruled that the disparagement clause violated the first amendment as the clause was subjective to different viewpoints, and The Slants trademark cannot be rejected on this basis.

In the 2019 case Iancu v. Brunetti, the court ruled that the clothing brand “Fuct” could be trademarked (Iancu v. Brunetti, 588 U.S. ___ (139 S. Ct. 2294)(2019)).

 The trademark was originally rejected in violation of Section 2(a) of the Lanham Act, finding the trademark to be an immoral or scandalous matter due to the pronunciation of the trademark. The Court found section 2(a) to violate the First Amendment as the section is once again viewpoint based.

Although the Court has ruled in favor of free speech in these last two cases, this case involving Elster’s trademark seems to be different.

 There is no subjectivity or viewpoint based discrimination as there were in the previous cases, the issue in this case is simply whether a public figure is provided the same protections as a regular citizen with regards to trademarks.

The case was argued before the Court on November 1, 2023,  and the justices seemed skeptical of the arguments of Elster’s lawyer that Elster’s free speech is being burdened.

The justices all took a few different approaches when considering the matter, but none seemed to be in favor of forcing the PTO to register the trademark.

In a crucial point, Justice Sotomayer questioned how speech was being limited when he could sell as many shirts as he wanted. Justices Gorsuch and Kavanaugh focused more on the historical precedent of names of living people not being allowed as trademarks.

With a different approach, Justice Kagan honed in on the fact that the statute is not viewpoint based. The only consideration is whether or not the named individual consented, and not whether or not the claim is favorable or critical of the individual.

 Based on these arguments the outcome of the Court seems unlikely to be in the favor of Elster. The Court’s opinion will be released in the coming months.

Reference

https://ipwatchdog.com/2023/06/05/high-court-take-vidals-trump-small-trademark-petition/id=161885/