Photo Credit: Getty Images
On Thursday, the Supreme Court unanimously rejected a political activist’s attempt to trademark the phrase "Trump Too Small", ruling that the federal trademark office did not violate the First Amendment by refusing the registration. The decision was a significant one, addressing the intersection of trademark law and free speech.
Justice Clarence Thomas wrote the majority opinion, emphasizing that trademarks containing names may be restricted. "Our courts have long recognized that trademarks containing names may be restricted. And these name restrictions served establishedprinciples", Thomas wrote. "This history and tradition is sufficient to conclude that thenames clause—a content-based, but viewpoint-neutral, trademark restriction—is compatible with the First Amendment". Thomas further added, “We see no reason to disturb this longstanding tradition, which supports the restriction of the use of another’s name in a trademark.”
The case originates from a memorable exchange during the 2016 Republican presidential primary, where then-candidate Donald Trump and Florida GOP Sen. Marco Rubio clashed, leading to a notable comment about the size of Trump’s hands. Trump responded during a debate, insisting there was no issue, which generated a slew of headlines and public interest.
In 2018, attorney Steve Elster sought to register "Trump Too Small" for use on T-shirts. Elster intended the trademark to critique Trump’s policies and personality by referencing the 2016 debate. The US Patent and Trademark Office (USPTO) denied the registration, citing federal law that prohibits trademarking the name of a living person without their consent. Elster appealed, arguing that the refusal violated his First Amendment rights. While the USPTO’s Trademark Trial and Appeal Board upheld the refusal, a federal appeals court later sided with Elster.
Justice Amy Coney Barrett, in a concurring opinion, agreed with the decision but not the majority’s reasoning. She suggested that the case could have been resolved using the court’s past precedents on trademark law. “The government can reasonably determine that, on the whole, protecting marks that include another living person’s name without consent risks undermining the goals of trademark,” Barrett wrote, indicating that the bar on trademarking someone else’s name is constitutional.
Justice Sonia Sotomayor, joined by the court’s liberal wing, also wrote a concurrence, emphasizing the application of the court’s First Amendment precedent. She highlighted that the provision of federal trademark law is a viewpoint-neutral, reasonable limitation on a trademark’s registration.
During oral arguments, the justices appeared inclined to side with the trademark office. Several questioned whether Elster’s free speech rights were truly impeded, as he was still free to make and sell the T-shirts without a trademark. "The question is: Is this an infringement on speech? And the answer is no", Sotomayor remarked.
The Supreme Court’s decision contrasts with recent cases where it bolstered First Amendment protections related to trademark registrations. In 2017, the court ruled in favor of Simon Tam, who sought to trademark his band name "The Slants", and in 2019, it struck down a provision of the Lanham Act prohibiting "immoral" or "scandalous" trademarks, allowing a clothing designer to trademark "FUCT".;
This ruling reaffirms the boundaries within which names can be used in trademarks, maintaining a balance between trademark protection and free speech.
