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Published in: Intellectual Property Newsletter

Full Supreme Court rejects TRUMP TOO SMALL Trademark

Rejection of TRUMP TOO SMALL trademark was not unconstitutional. Applicants for federal trademarks involving the names of individuals must get permission from the individuals under Lanham Act, the Supreme Court ruled. According to the ruling, the fact that permission must be obtained was a proper basis for rejecting the application and was not a violation of Applicant's constitutional first amendment right.

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Supreme Court rejects TRUMP TOO SMALL Trademark: Implications for Trademark Law

Supreme Court rejects TRUMP TOO SMALL Trademark
Supreme Court rules that the Lanham Act requirement of was not unconstitutional and rejects Trademark application for TRUMP TOO SMALL without permission.

In a recent decision, the Supreme Court ruled that the USPTO could prevent a trademark applicant from registering TRUMP TOO SMALL as a trademark without permission from former Pres. Trump, in Vidal v. Elster.  The case involves the intersection of Trademark Law and the First Amendment Law. The case revolved around Steve Elster’s attempt to register the trademark TRUMP TOO SMALL for use on apparel, which was denied by the United States Patent and Trademark Office (PTO) under the Lanham Act’s “names clause.” This clause prohibits the registration of trademarks that consist of or comprise a name identifying a particular living individual without their written consent.

Background of the Case

The trademark “TRUMP TOO SMALL” references a 2016 presidential primary debate exchange between then-candidate Donald Trump and Senator Marco Rubio. Elster’s application was rejected by the Trademark Office, and the Trademark Trial and Appeal Board affirmed this decision, citing the Lanham Act’s names clause. Elster argued that this prohibition violated his First Amendment rights, but the Federal Circuit initially sided with him, reversing the PTO’s decision.

Supreme Court’s Analysis

The Supreme Court rejects TRUMP TOO SMALL Trademark based on the Lanham Act, the federal trademark law.  Under the Lanham Act, the Trademark Office may not register a trademark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.” 15 U. S. C. §1052(c).  Based on this requirement and the fact that former Pres. Trump did not authorize the registration, the Trademark Office and the TTAB refused to allow Mr. Elster to register the phrase TRUMP TOO SMALL.

However, the Federal Circuit held that the requirement for permission was unconstitional because it violated the First Amendment.  The Federal Circuit held that the requirement was unconstitutional even though the requirement was viewpoint-neutral and did not merit heightened scrutiny, becasue under intermediate scrutiny the government was not able to identify any substantial governmental interest in preventing the trademark registration.

The Supreme Court, however, reversed the Federal Circuit and upheld the constitutionality of the names clause, emphasizing several key points:

  1. Content-Based but Viewpoint-Neutral Regulation: The Court acknowledged that the names clause is content-based since it applies specifically to trademarks containing a person’s name. However, it is viewpoint-neutral because it does not discriminate based on the ideology or opinion expressed by the trademark.
  2. Historical Context of Trademark Law: The Court highlighted that trademark law has always been inherently content-based, focusing on the content of the mark to prevent consumer confusion and protect the reputation and goodwill associated with trademarks. This historical context supports the coexistence of content-based trademark restrictions and the First Amendment.
  3. Protection of Personal Rights: The Court reiterated the long-standing principle that individuals have ownership over their own names and that trademark law has traditionally protected this right. The names clause aligns with this principle by preventing the unauthorized use of a living person’s name in a trademark, thereby safeguarding their reputation and goodwill.
  4. Consumer Protection: The names clause also serves the fundamental purpose of trademark law, which is to prevent consumer confusion regarding the source of goods. By restricting the use of personal names without consent, the clause helps ensure that consumers can accurately identify the origin of products and make informed purchasing decisions1.

Implications for Trademark Law

This ruling has significant implications for trademark law and marketing practices:

  • Trademark Registration: Marketers and businesses must be cautious when attempting to register trademarks that include the names of living individuals. Without written consent, such applications are likely to be denied under the Lanham Act’s names clause.
  • Balancing Creativity and Legal Compliance: While creative marketing strategies are essential, they must be balanced against legal restrictions to avoid potential legal challenges. This ruling reinforces the need for marketers to navigate trademark law carefully and respect individual rights.
  • Political and Satirical Trademarks: The decision also impacts the registration of politically-themed or satirical trademarks. Even in cases involving political commentary, the use of a living individual’s name without consent remains restricted under trademark law.

In conclusion, the Supreme Court’s decision in Vidal v. Elster reaffirms the constitutionality of the Lanham Act’s names clause which limits the registration of Trademarks with a persons name without permission while underscoring the importance of balancing trademark law with First Amendment rights. Marketers and businesses must remain vigilant in ensuring their trademark applications comply with legal requirements to protect both their interests and the rights of individuals.  If you have any questions about trademarks or registering a trademark, please contact one of our trademark attorneys.