By Michael Kondoudis, Small Business Trademark Attorney
This is our EASY guide to the TRUMP TOO SMALL trademark. If you need to quickly learn the history, issues, and questions raised by this trademark case, read on. This post is for you.
Let’s jump in!
The Background of TRUMP TOO SMALL
During the 2016 presidential campaign, Donald Trump and his then-rival, Sen. Marco Rubio, engaged in a series of heated exchanges on the campaign trail. Trump often taunted Rubio by calling him “Little Marco,” and in response, Rubio critiqued the size of Trump’s hands at a campaign stop.
In 2018, Steve Elster applied to register the trademark “TRUMP TOO SMALL” with the intention of using it on shirts.
The TRUMP TOO SMALL Trademark Application
The trademark application for TRUMP TOO SMALL was filed with the U.S. Patent and Trademark Office on January 10, 2018. The trademark application for TRUMP TOO SMALL was assigned serial number 87749230.
The Status of the TRUMP TOO SMALL Trademark
The USPTO (United States Patent and Trademark Office) refused Mr. Elster’s application to register the mark, citing the Federal Trademark Statute. The refusal was primarily based on the fact that Mr. Elster did not obtain written permission from President Trump. Later on, the USPTO also denied the registration based on the grounds that it would falsely suggest a connection with a living individual.
Mr. Elster appealed the rejection to the USPTO’s Trademark Trial and Appeal Board, which ultimately refused registration. An appeals court reversed, holding that
In a surprising turn of events, a Court of Appeals reversed this decision. The Court held that the Trademark Statute’s restrictions unconstitutionally limited Mr. Elster’s free speech rights, especially since the mark contained criticism of a government official or public figure. It also found that the government has no interest in protecting the publicity rights of such a public figure. Thus, the refusal violated the First Amendment, according to the Court of Appeals.
Currently, the application for TRUMP TOO SMALL is suspending pending appeal.
Trademark Registration and the USPTO
The Supreme Court has held that federal registration of a trademark serves to bolter the “rights of exclusion” by giving owners “additional protections against infringers.”
The USPTO (United States Patent and Trademark Office) is the government agency that administers and registers trademarks.
To enjoy the enhanced “rights of exclusion, a person who uses or plans to use a trademark in commerce must apply to register the mark with the USPTO. Once approved, the USPTO issues a certificate of registration “in the name of the United States of America.”
The USPTO can only register trademarks that satisfy the statutory criteria.
The Statutory Criteria for Trademark Registration
The statutory criteria for trademarks is the Lanham Act (15 U.S.C. § 1052). The Lanham Act is the federal trademark statute of the United States.
What Does the Lanham Act Say?
The Lanham Act instructs the USPTO to refuse the registration of a mark that consists of or includes the name of a particular – UNLESS that living individual provides their written consent.
The Lanham Act reads as follows:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
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(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
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What is the Supreme Court?
The Supreme Court is the highest court of the United States and is responsible for interpreting the Constitution and federal laws. It is established by the U.S. Constitution and consists of nine justices who are appointed by the President and confirmed by the Senate.
The Supreme Court has the power of judicial review, which means it can declare laws or executive actions unconstitutional if they violate the Constitution. The Court hears cases on appeal from lower federal courts and state courts, as well as cases in which a state is a party.
The decisions of the Supreme Court have far-reaching impacts on American law and society, and often set precedents that shape future legal disputes. The Court’s rulings are considered final and cannot be appealed except in rare cases.
Why is the Supreme Court Hearing This Case?
The U.S. Supreme Court decided to review this case for several reasons.
1. The Court of Appeals decision in favor of Mr. Elster, in essence, invalidated parts of a 75-year-old federal statute. The Supreme Court regularly reviews lower court decisions that hold federal statutes invalid, especially on First Amendment Grounds.
2. The case presents an opportunity for the Court to resolve the question of whether the Lanham Act, the United States trademark statute, is a restriction on free speech or a condition on a government benefit (the benefits of registration).
3. The Court of Appeals was probably wrong. The refusal to register the TRUMP TOO SMALL trademark does not prevent Mr. Elster from any speech. He remains free to use the mark and speak his mind. He just cannot enjoy the benefits that come with federal registration of his mark.
When Will The Supreme Court Hear This Case?
The Supreme Court will hear this case during the next term 2023-24 and decide it next year.
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).