Court Should Block Registration Of ‘Trump Too Small’ Trademark Not Because It’s Someone’s Name, But Because No One Should Control The Phrase

There’s an interesting thing that happens all too often in trademark cases, whereby people seem to flip the underlying argument. We see it in cases where someone opposes the registration of a certain trademark, and the party seeking the trademark complains that the government is trying to “censor” them or limit their speech, when more accurately granting the trademark is more likely to limit everyone else’s speech.

This can get complicated. Some may recall that back when there were a series of cases regarding whether or not the US Patent & Trademark Office could deny a trademark because it found it “disparaging,” whether or not that violated the 1st Amendment. My initial reaction to the case was that denying a trademark like that wouldn’t violate the 1st Amendment, because it then meant that the term or phrase in question was free for anyone to use. If anything, it would enable more speech. After talking it over with many lawyers, however, I came to change my mind on the more specific question at play, which was simply whether or not the limitation on “disparaging” speech was a violation of the 1st Amendment, because it involved the government determining whether or not speech was disparaging, which made it a content-based restriction.

But, the larger underlying point still stands, that when a trademark is granted it is, inherently, limiting the speech of others in some ways; some might argue in justifiable ways, but it’s important to keep that in mind.

This brings us to a case coming before the Supreme Court next term. On its face, it looks similar to earlier cases regarding NFL team and band names deemed “disparaging.” But, in some ways it’s different. The case is Vidal v. Elster, and the underlying issue is whether or not the PTO can reject an applied for trademark on the phrase “Trump Too Small.”

In this case, the PTO rejected the trademark, not because of disparagement — which the Supreme Court already dealt with in Matal v. Tam (the case about the band The Slants) — but because because of a prohibition on trademarks on the names of living people.

Steve Elster then went to court (well, first he went to the Trademark Trial and Appeal Board, which rejected his claim, and then he went to court), arguing that the case was similar to Tam, and that the rejection of his trademark for being about a living person violated the 1st Amendment in the same way that the ban on disparaging trademarks did. The Federal Circuit made a ruling saying this ban on trademarks named after living people also violated the 1st Amendment, similar to Tam:

The statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests. It effectively grants all public figures the power to restrict trademarks constituting First Amendment expression before they occur. In Tam , Justice Alito, joined by three other Justices, characterized as “far too broad” a statute that would bar the trademark “James Buchanan was a disastrous president.” 137 S. Ct. at 1765 (Alito, J.)….

But, again, not granting a trademark doesn’t stop the underlying speech. It just means that the government can’t hand control over that speech (including the power to restrict it from others) to private parties.

And that’s the case that an amicus brief from Public Citizen makes in this case. It goes back to my original take in the Tam case, that the underlying issue here is not a 1st Amendment violation around a ban on trademarks based on content, but rather that allowing this trademark would actually limit the usage of this political speech.

The First Amendment, however, does not require registration of the proposed trademark. Respondent does not need trademark rights to print his speech on shirts that he will offer for sale. Further, registration would allow him to seek to prevent other members of the public from promoting their shared political antagonism using the same or similar words on shirts offered for sale. Political messages printed on shirts and other items of clothing, however, are fully protected, noncommercial speech even if the clothing is offered for sale. The First Amendment would not tolerate the enforcement of such a trademark against other people’s expressive use of language similar to “Trump Too Small,” and by the same token it bars a federal agency from giving Respondent a limited monopoly in that core political speech.

As Public Citizen’s Paul Levy explains in a related blog post:

… the printing of criticisms of companies and political figures on T-shirts and other expressive merchandise is noncommercial speech protected by the First Amendment. We also contend that the Lanham Act cannot consistent with the First Amendment be enforced against this non-commercial speech, and that the only reason why Elster could want a trademark is to secure a limited monopoly in core political speech that would entitle him to decide who else could print this slogan on clothing or other paraphernalia offered for sale, or to charge a fee for a license to use the slogan. Elster’s papers admit (see page 19 of his opposition to a grant of certiorari), that he would enforce his trademark against “competing T-shirts using his brand name in a confusing manner.” In effect, the very fact about the phrase being trademarked—that it represents core political speech attacking the person whose name in part of the mark—that makes it appealing for an as-applied challenge to the statutory provision requiring consent from the person whose name appears in the mark, is the feature of the mark that makes it unacceptable under the First Amendment to grant a monopoly limiting its use on expressive merchandise. We suggest that the Court could decide the First Amendment bars the issuance of trademarks in slogans that criticize political and other public figures, or it could construe the Lanham Act as requiring the longstanding rule for trademark examiners that bars registration of political slogans.

Basically, the argument is that most of the discussion in this case is all wrong, as it’s not about whether or not the PTO can reject the use of living people’s names, but whether or not the underlying trademark would even be valid in the first place, while making it clear that the 1st Amendment forbids the use of a trademark to effectively control and limit the use of a (obviously 1st Amendment protected) bit of political discourse.