On Wednesday, November 1, the U.S. Supreme Court heard oral argument to determine if “TRUMP TOO SMALL” is a registrable trademark when the mark contains the name of a living individual (Donald Trump) and that individual has not consented to registration of the mark. Ordinarily a person must consent to their name being used in a registered trademark; however, in this case the living individual is a former U.S. President and the mark is political speech. That combination is usually deserving of a very high degree of protection from laws and regulations.
The case started in 2018 when a USPTO Examining Attorney rejected an application for “TRUMP TOO SMALL” for clothing items because the application did not include a written consent statement from Donald Trump.
The applicant appealed to the USPTO’s Trademark Trial and Appeal Board (“TTAB”), claiming that refusing registration over his mark violates the First Amendment to the Constitution. Unconvinced, the TTAB affirmed the USPTO Examining Attorney’s refusal to register the mark. The applicant then appealed the TTAB’s decision to the United States Court of Appeals for the Federal Circuit, where the applicant found a more favorable audience. The Federal Circuit reversed the TTAB and held that, in this case, the written consent requirement violates the First Amendment given Donald Trump’s status as a former U.S. President and as an ongoing public figure.
Early analysis suggests that this case might turn out differently than the previous Supreme Court cases that invalidated the “immoral or scandalous marks” registration prohibition (Brunetti case) and the prohibition on registering disparaging marks (the Tam case). Here, the prohibition on registering the names of any and all living individuals is not based on the content of the speech/mark as was the case in Brunetti (FUCT) and Tam (The Slants).
The oral argument transcript is available here: https://www.supremecourt.gov/oral_arguments/argument_transcripts/2023/22-704_g3bi.pdf
(Interestingly, the TRUMP TOO SMALL application is an “intent-to-use” application, which means the applicant has not yet claimed use of the mark on any clothing items. Oftentimes when people seek to register a slogan (like TRUMP TOO SMALL) for clothing, they will use the mark “ornamentally’ or decoratively instead of as a true, source-identifying trademark. The USPTO will refuse clothing-based applications if the specimen shows ornamental use instead of trademark use. If this application is allowed to proceed, the applicant will have to make sure that the mark is used as a mark – such as via a hangtag or printed inside the collar area or other location where branding is typically located. “TRUMP TOO SMALL” plastered across the entire front of a shirt may not qualify as a trademark use.)
Call or click here to get started on protecting your IP today, and we’ll keep you updated on this case!
