Is Trump’s Name ‘Too Big’ to Trademark?

*Amanda Fruman

I. Introduction

On November 1, 2023, the Supreme Court of the United States heard oral arguments in Vidal v. Elster.[1] The outcome of this case has the potential to affect the legal dynamic between trademark restrictions and protected free speech.[2]  At issue in Vidal v. Elster is a failed trademark attempt of the phrase, “TRUMP TOO SMALL.”[3]

II. The Dispute

In 2018, Steve Elster, a California labor law attorney and “politically active Democrat,”[4] applied for federal registration to trademark the phrase “TRUMP TOO SMALL” as political commentary on former President Trump.[5] The trademark sought to enable Elster to sell merchandise using the phrase, popularized in a 2016 primary debate where Senator Marco Rubio poked fun at the size of former President Trump’s hands.[6] Elster argued that with the trademarked phrase he intended to “convey[] that some feature of [former] President Trump and his policies are diminutive.”[7] The U.S. Patent and Trademark Office (USPTO) rejected Elster’s application for the trademark under 15 U.S.C § 1502(c) and Section 2(a).[8] The USPTO based its decision on the notion that Elster did not receive permission from the former President to trademark his name and that the mark “falsely suggested a connection” to former President Trump.[9] Elster appealed the decision to the USPTO Appeal Board.[10] The USPTO Appeal Board upheld the denial under Section 2(c) because of its use of former President Trump’s name without his consent. It found a compelling government interest in upholding the statute, such as protecting the individual’s rights.[11] The USPTO Appeal Board conceded that the USPTO did not have jurisdiction to address First Amendment concerns.[12] Elster then appealed the decision to the U.S. Court of Appeals for the Federal Circuit.[13]

III. The Appeal

Before the Federal Circuit, Elster argued that the application of the Latham Act unconstitutionally restricted his freedom of speech rights under the First Amendment.[14] Compelled by this argument, and concluding that a restriction of free speech of this magnitude should be subject to intermediate scrutiny at a minimum,[15] the court reversed the judgment of the Appeal Board.[16] The court also found no important¾let alone compelling¾state interest to meet the heightened threshold required by intermediate scrutiny.[17] Therefore, the USPTO could not justify its restriction on Elster’s First Amendment Rights.[18] The court did not find the USPTO’s arguments in favor of public interest or for privacy significant enough to outweigh Elster’s constitutional right to free speech.[19] Following the decision, the United States petitioned the Supreme Court.[20] The Court granted cert in June 2023 and heard oral arguments as part of the 2023 September Term.[21]

IV. The Oral Arguments

The question posed to the Supreme Court in November was: “[d]oes the refusal to register a trademark under 15 U.S.C § 1052(c) when the mark contains criticism of a government official or public figure violate the Free Speech Clause of the First Amendment?”[22] The Court’s resolution of this case may impact the scope of trademark law proportioned against the fundamental right to free speech.

The counsel for the United States argued first that Section 1052(c) “imposes a condition on a federal benefit, not a restriction on speech.”[23] This means that Elster may not be able to trademark the phrase, but he could still sell shirts with that slogan if he wished.[24] Secondly, the United States argued that because Section 1052(c) was viewpoint neutral, meaning it applies to all trademarks equally regardless of the message, the provision should not be treated as discriminatory.[25] Finally, the United States argued that granting Elster the trademark has the potential to stifle political expression because the registration could “provide[] enhanced mechanisms for the mark owner to restrict the speech of his competitors.”[26]

In response, Elster’s counsel argued that Section 1052(c) should be subject to heightened scrutiny because it selectively “withholding [] generally available legal protections is a substantial burden on speech.” [27] Secondly, counsel argued the clause was meant to protect the “feelings of public figures,” which is unrelated to the purpose of trademark law. [28] And finally, Elster’s counsel argued that the Section was viewpoint discriminatory because it allows for public figures to register marks that are “presumably positive views about themselves” while limiting others from sharing adverse views without the figure’s consent.[29]

V. Conclusion: Can Critical Speech of a Living Person be Trademarked Speech in Alignment with the First Amendment?

This case poses unique questions regarding the scope of trademark law and the scope of free speech protection over critical speech of public figures. The Federal Circuit Court acknowledged that the “right to criticize public men” is “[o]ne of the prerogatives of American citizenship.”[30] Even so, the use of critical language makes it harder to gain the requisite consent of the living individual to trademark the phrase, a requirement of Section 2 of the Lanham Act.

Thus, the Supreme Court could find that Section 2 of the Lanham Act contradicts Elster’s First Amendment right to share and profit from this critical phrase. Since three of the seven justices are Trump appointees,[31] it will be all the more interesting to see if the person at the epicenter of the critical speech case impacts the court’s resolution of the statute’s constitutionality.

*Amanda Fruman is a second-year student at the University of Baltimore School of Law. At school, she enjoys being a Law Review staff editor, a member of the Law School’s Honor Board, a University-Wide Conduct Board Member, a Teaching Assistant to Professor Amy Sloan, and a Law Scholar for Professor Dionne Koller. During her first-year summer, Amanda served as a judicial intern to the Honorable Chief Justice Matthew Fader at the Supreme Court of Maryland. In May, she is excited to join Miles and Stockbridge as a summer associate.

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[1] See generally Transcript of Oral Argument, Vidal v. Elster, (2024) (No. 22-704) https://www.supremecourt.gov/oral_arguments/argument_transcripts/2023/22-704_g3bi.pdf. 

[2] Vidal v. Elster, SCOTUSblog, https://www.scotusblog.com/case-files/cases/vidal-v-elster/ (last visited Feb. 22, 2024).

[3] Id.

[4] Jimmy Hoover, Meet the Labor Lawyer Whose Anti-Trump Slogan Is Now at Supreme Court, Nat’l L. J. (June 6, 2023, 6:15 PM), https://www.law.com/nationallawjournal/2023/06/06/meet-the-labor-lawyer-whose-anti-trump-slogan-is-now-at-supreme-court/?slreturn=20240218104202.

[5] Amy Howe, Justices Take Up “Trump Too Small” Trademark Case, SCOTUSblog (June 5, 2023, 11:22 AM), https://www.scotusblog.com/2023/06/justices-take-up-trump-too-small-trademark-case/.

[6] Id.; see also In Re: Steve Elster, No. 20-2205, 1, 2 (Fed. Cir. 2022), https://cafc.uscourts.gov/opinions-orders/20-2205.OPINION.2-24-2022_1913245.pdf. 

[7] Id.

[8] John Elwood, Prohibiting Trademarks Using Other People’s Names ¾ and Hypothetical Jurisdiction, SCOTUSblog (June 1, 2023, 2:43 PM), https://www.scotusblog.com/2023/06/prohibiting-trademarks-using-other-peoples-names-and-hypothetical-jurisdiction/.

[9] Id.

[10] Vidal v. Elster, Oyez, https://www.oyez.org/cases/2023/22-704 (last visited Mar. 26, 2024).

[11]  Id.

[12]  Id.

[13] Id.

[14] Steve Elster, No. 20-2205, 1, 4 (Fed. Cir. 2022).

[15] Id. at 2–4.

[16] Id. at 9.

[17] Id. at 19.

[18] Id. at 19.

[19]  Id. at 11–17.

[20] Vidal v. Elster, supra note 2.

[21] Id.

[22] Vidal v. Elster, supra note 10.

[23] Transcript of Oral Argument, supra note 1 at 3.

[24] Transcript of Oral Argument, supra note 1 at 3.

[25] Transcript of Oral Argument, supra note 1 at 4.

[26] Transcript of Oral Argument, supra note 1 at 4.

[27] Transcript of Oral Argument, supra note 1 at 43.

[28] Transcript of Oral Argument, supra note 1 at 43.

[29] Transcript of Oral Argument, supra note 1 at 43–44.

[30] Steve Elster, No. 20-2205, 1, 10 (Fed. Cir. 2022).

[31]Supreme Court Nominations (1789-Present), U.S. Senate, https://www.senate.gov/legislative/nominations/SupremeCourtNominations1789present.htm,  (last visited Oct. 17, 2023).