Supreme Court upholds rejection of “Trump Too Small” trademark in free speech dispute

Washington — The Supreme Court on Thursday ruled that U.S. Patent and Trademark Office didn’t violate the First Amendment when it refused to register a trademark for the phrase “Trump Too Small,” saying a federal law prohibiting trademarks that include other people’s names does not run afoul of the Constitution.

The high court reversed a decision from the U.S. Court of Appeals for the Federal Circuit, which found that barring registration of “Trump Too Small” under a provision of federal trademark law unconstitutionally restricted free speech. The ruling rejects the effort from a California lawyer to trademark the phrase.

“The history and tradition of restricting trademarks containing names is sufficient to conclude that the names clause is compatible with the First Amendment,” Justice Clarence Thomas wrote for the majority.

The court ruled unanimously that the federal prohibition on trademarks that consist of a living person’s name without their consent does not violate free speech rights and noted that its decision is a narrow one. 

“The Lanham Act’s names clause has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be restricted,” Thomas wrote. “And, these name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause — a content-based, but viewpoint-neutral, trademark restriction — is compatible with the First Amendment.”

Justice Amy Coney Barrett, as well as Justices Elena Kagan, Sonia Sotomayor and Ketanji Brown Jackson, noted separately that while they agree as to the constitutionality of the so-called names clause, they disagree with some of Thomas’ reasoning.

The “Trump Too Small” case

Known as Vidal v. Elster, the dispute stems from California lawyer Steve Elster’s attempt to register the words “Trump Too Small” for use on shirts and hats with the U.S. Patent and Trademark Office in 2018. The phrase references an exchange between then-candidate Trump and Florida Sen. Marco Rubio during the 2016 race for the White House. Rubio, also a GOP presidential hopeful, jokingly claimed Trump had disproportionately small hands as a veiled insult to his anatomy, prompting Trump to defend his hand size during a televised presidential debate.

Elster said he wanted to register the mark to convey a political message about the former president, who is vying for the job again, and his “package” of policies.

An examining attorney with the Patent and Trademark Office declined Elster’s application to register the mark, citing a provision of the Lanham Act that bars registration of a mark that consists of the name of a living person without their consent.

An internal appeal board upheld the rejection, noting that the mark includes Trump’s name without his approval. But the Federal Circuit reversed, finding that the part of the Lanham Act relied upon by the Patent and Trademark Office was unconstitutional when it comes to marks that criticize a government official or public figure.

Elster’s T-shirts bearing the phrase “Trump Too Small” are still available online for $24.99, even though his trademark application was refused. 

The ruling from the Supreme Court joins a string of other First Amendment challenges to provisions of the Lanham Act, the main statute governing trademarks. The high court in 2017 struck down a section of the law that barred registration of disparaging marks and did the same for a provision prohibiting immoral or scandalous marks in 2019.