Free Speech and Federal Trademark Statutes – Supreme Court to Settle “TRUMP TOO SMALL” Debate

With the ink still drying on its decision in Jack Daniel's Properties, Inc. v. VIP Products LLC (discussed more here), holding that First Amendment considerations do not necessarily take precedence over federal trademark law, the United States Supreme Court recently signaled that it would be considering another clash between the Constitution and federal trademark law. On June 5, 2023, the Supreme Court granted the petition for writ of certiorari filed by the United States Patent and Trademark Office (“USPTO”) in order to review the constitutionality of a federal statute which prevented a trademark applicant from registering a trademark for “TRUMP TOO SMALL” because it includes the name of a living person who has not consented to the registration.

History of the “TRUMP TOO SMALL” Trademark Application

In 2018, Steve Elster filed a trademark application for “TRUMP TOO SMALL” to be used in connection with shirts and other apparel. The USPTO rejected Elster’s application based on 15 U.S.C. § 1052(c), which prevents a party from obtaining a trademark which “comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” Elster appealed the rejection to the Trademark Trial and Appeal Board (“TTAB”) who upheld the USPTO’s original rejection.

After the TTAB decision, Elster appealed his case to the United States Court of Appeals for the Federal Circuit and argued that the statute violated the First Amendment because it impermissibly restricted commentary and criticism of a political figure. In response, the USPTO argued that the government has a compelling interest in protecting an individual’s right to publicity because misappropriation of a name can dilute the commercial value of a name or exploit the commercial interests of another. Many states, including Missouri, recognize the tort of infringement of the right of publicity (discussed more here). The USPTO further argued that 15 U.S.C. § 1052(c) serves a compelling government interest because it protects an individual’s right to privacy. 

Agreeing with Elster, the Federal Circuit held that the USPTO’s refusal of the “TRUMP TOO SMALL” trademark registration was unconstitutional because the USPTO did not have a substantial interest that justified restricting speech critical of government officials. The Federal Circuit rejected the argument that the government had a compelling interest in protecting the privacy of former President Trump, “the least private name in American life.” While noting that the right to publicity posed a more complex issue, the Federal Circuit held that the First Amendment right to criticize public officials outweighs any interest in preventing the commercial dilution of a name.

In February of this year, the USPTO issued guidance that it would be suspending actions on pending trademark applications involving trademarks subject to refusal under 15 U.S.C. § 1052(c) while the USPTO’s petition for a writ of certiorari is under review. If the only issue preventing the registration of a trademark is 15 U.S.C. § 1052(c), the trademark application will remain suspended until the Supreme Court issues a decision.

The Pending Writ

Any trademark applications whose trademarks could be subject to refusal under 15 U.S.C. § 1052(c) should anticipate significant delays until the Supreme Court issues a decision on this case, which is expected in 2024. 

Further, any individual (or entity) with a commercial interest desiring to prevent others from using their name or likeness on goods or services should consider promptly filing for trademark registration on their name before the Supreme Court can rule on the issue. Such filing should not be subject to the delay imposed by the USPTO’s suspension and, should the Supreme Court uphold the finding of unconstitutionality, could curtail having to fight later attempts to register potentially derogatory phrases where the filer asserts the phrase comprises legitimate public criticism of the individual. On the other hand, First Amendment considerations would likely protect such a use where the use is principally expressive as opposed to commercial.

The attorneys at Lewis Rice have extensive experience in prosecuting trademark applications and in rights of publicity. If you have questions about how the Supreme Court’s potential could affect your intellectual property rights, or if you would like to pursue intellectual property protections, please reach out to a member of Lewis Rice’s Intellectual Property group.