TRUMP TOO SMALL, Another Trademark Prohibition to Fall?

By Michelle L. Visser

The Supreme Court heard arguments last week regarding an appeal of the Patent and Trademark Office’s refusal to register TRUMP TOO SMALL for shirts and sweat shirts filed by Steve Elster, an attorney.  It is undisputed that “TRUMP” in the trademark refers to former President Donald J. Trump, who was not a party to this case.  

Since its enactment in 1946, the Lanham Act (the federal trademark law) prohibits registration of certain types of trademarks, for example, under Section 2(a) of the Act, those that identify a living person that has not consented to registration, as well as those that are either scandalous, immoral, or deceptive.  In recent years, the Supreme Court has agreed to consider challenges to these prohibitions on the basis they violate the trademark applicants’ First Amendment freedom of speech rights.

In 2017, the Supreme Court reversed the Trademark Office’s refusal to register the trademark THE SLANTS for entertainment services filed by Simon Tam, a member of the Asian-American music group THE SLANTS.  The Trademark Office determined that the mark was a racial slur and therefore may “disparage … persons … or bring them into contempt, or disrepute.”  The Supreme Court ruled that trademarks are private speech, not government speech, and the refusal to register discriminated against a particular viewpoint.

On the heels of the Tam case, in 2019, the Supreme Court found in favor of artist Eric Brunetti in his application to register the trademark FUCT for apparel.  Since the trademark was the phonetic equivalent of a profane term, the Trademark Office determined that it was “scandalous or immoral.”  For decades, trademarks with profanity, vulgarity, or sexually explicit graphics could not be registered. The Supreme Court determined that the refusal of Brunetti’s application also violated the First Amendment, as the government was discriminating against certain trademarks based on the content of their messages.

Now the Supreme Court is considering, once again, the same Section 2(a) of the federal trademark law as was partially struck down in the FUCT and THE SLANTS cases. With respect to TRUMP TOO SMALL, the provision prohibits registration of a trademark that identifies a particular living individual without the individual’s consent.  This applies to any name, nickname, signature, image, or other designation that identifies a living person. This prohibition is intended to protect the privacy and publicity rights of the person identified in the trademark. (Incidentally, the trademark laws also prohibit registration of presidents’ names after death, without consent from his or her spouse during the spouse’s lifetime.)  

The applicant argued that the refusal to register was based on the content of the trademark, and therefore violated his First Amendment freedom of speech rights.  He also argued to the Trademark Office that “any nominal rights of privacy and publicity of a presidential candidate and of current and former Presidents yield to First Amendment protections of political speech.”

In last week’s arguments, the justices seemed skeptical that this part of federal trademark law supporting the refusal to register infringed the applicant’s free speech rights, for a variety of reasons. Most notably, Justice Kagan noted that TRUMP TOO SMALL was not refused registration because of the viewpoint expressed (like THE SLANTS and FUCT were), but rather, because the trademark included the name of an individual that had not consented to registration.  This free speech challenge appears likely to fail.  

This author will breathe a sigh of relief if consent would be required for any VISSER TOO TALL trademark applications down the road.

Michelle Visser is a very, very tall partner of Fishman Stewart, with over 25 years of experience practicing trademark law with other members of the firm’s Trademark Group.