By Andrew Chung
(Reuters) -The U.S. Supreme Court on Thursday barred a federal trademark for the phrase “Trump Too Small” – an irreverent criticism of former President Donald Trump – rejecting a California attorney’s claim that the trademark denial violated his constitutional rights to violates free speech.
The justices unanimously overturned a lower court’s decision that the U.S. Patent and Trademark Office’s denial of Steve Elster’s application to register the trademark and use it exclusively on T-shirts violated the U.S. First Amendment constitution.
The case centered on a provision in a 1946 federal trademark law that prohibits the registration of any trademark that uses the name of a living individual without that person’s written consent. At issue was whether free speech protections for criticism of public figures outweigh the U.S. Patent and Trademark Office’s concerns about Trump’s rights, as the lower court ruled.
The justices unanimously agreed that the “names clause” provision in question is constitutional, but differed on the reasons for reaching that conclusion.
“Restrictions on trademarked names have a long history,” conservative Justice Clarence Thomas wrote for a majority of the justices. “Such restrictions have historically been based on the idea that a person owns his own name, and that he should not be excluded from using that name by someone else’s trademark.”
The Biden administration had argued that the law is a permissible condition of government benefits and does not illegally curb freedom of expression because it blocks registrations regardless of the viewpoint conveyed. Elster argued that allowing public figures to register their own positive messages as trademarks, while excluding registrations that criticize them, borders on position discrimination.
Elster filed in 2018 for the trademark to be placed on shirts – along with a mocking hand gesture illustration – invoking an exchange between Trump and the US. Senator Marco Rubio during a debate between candidates for the 2016 Republican presidential nomination. Trump had previously insulted Rubio as “Little Marco.” Rubio responded that Trump had disproportionately small hands.
‘Look at those hands. Are they small hands?’ Trump asked during the debate. ‘If they are small, something else must be small. I guarantee you there is no problem. I guarantee it.’
Elster said “Trump Too Small” expressed his opinion about “the smallness of Donald Trump’s overall approach to governing.” Trump was president when the application was filed.
Trump, the Republican candidate who challenged Democratic President Joe Biden in the November 5 US elections, was not personally involved in the case and has not commented on it.
The trademark office rejected Elster’s application. But the Washington-based U.S. Court of Appeals for the Federal Circuit sided with Elster, ruling that the government’s interest in protecting the privacy and publicity rights of public figures did not supersede Elster’s right under the First Amendment to to criticize them.
Elster’s application remained on hold at the agency pending the Supreme Court’s ruling.
The Supreme Court has overturned two trademark laws in recent years, citing concerns about freedom of expression. It ruled in 2017 in favor of Asian-American rock band The Slants against a ban on “disparaging” trademarks, and in favor of artist Erik Brunetti against a ban on “immoral” or “scandalous” trademarks in a dispute over his ‘FUCT’. “brand in 2019.
(Reporting by Andrew Chung in New York and Jogn Kruzel in Washington; Editing by Will Dunham)
