The US Court of Appeals for the Federal Circuit on Thursday allowed the registration of the trademark “Trump Too Small,” finding that the US Patent and Trademark Office’s (USPTO) refusal to register the trademark violated the applicant’s First Amendment right to freedom of speech. The applicant, Steve Elster, had applied to register the trademark with the USPTO in January 2018 to be used on shirts. According to Elster, the phrase insinuated the diminutive nature of President Trump’s policies.
The USPTO initially rejected the application on two grounds. First, it found that the mark was not registrable because Section 2(c) of the Lanham Act 15 USC § 1052(c) bars using the name of a living individual without their consent. Second, they found that using his name suggested a false connection with Trump, which is barred by 15 USC § 1052(a).
Before the Trademark Trial and Appeal Board (TTAB), Elster’s appeal failed. Elster argued that the public would not presume a connection as the shirts were overtly anti-Trump in nature. The TTAB rejected this argument by stating that Section 2(c) is applicable so long as the name identifies a living individual, and a suggested false connection was not a prerequisite. Further, Elster contended that the First Amendment protected his mark as political speech criticizing Trump and that Trump had yielded the rights to privacy and publicity when he assumed public office. The TTAB rejected this contention as well.
The Federal Circuit allowed the registration finding that Elster’s First Amendment right to criticize a public, political figure superseded Trump’s interests of privacy and publicity. The Court found that the trademark did not violate Trump’s publicity rights as Elster was not commercially exploiting Trump’s name.
The Court also observed that the law found in Section 2(c) may be unconstitutionally broad insofar as it did not permit the registration of marks that “advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests.” The Court also discussed two decisions of the Supreme Court from recent years, Matal v. Tam and Iancu v. Brunetti, which also struck down prohibitions on registrable trademarks based on First Amendment rights. However, it did not strike down the provision altogether.
