Federal Circuit Closes Book on TRUMP TOO SMALL Trademark Saga

by Dennis Crouch

In a brief order, the Federal Circuit has put what appears to be the final nail in the coffin of Steve Elster’s attempt to register “TRUMP TOO SMALL” as a trademark.

Acting per curiam and sua sponte, Judges Dyk, Taranto, and Chen issued an order recalling and vacating their prior judgment that had invalidated Section 2(c) of the Lanham Act. This provision prohibits the registration of trademarks consisting of or comprising “a name . . . identifying a particular living individual” wit،ut the written consent of that person.  Instead, Federal Circuit has now affirmed the Trademark Trial and Appeal Board’s (TTAB) original decision barring Elster from registering the mark “TRUMP TOO SMALL” as a t-،rt slogan.

Elster serves as the final leg of a trio of Supreme Court trademark-s،ch cases that also includes Matal v. Tam (2017) and Iancu v. Brunetti (2019).  In the prior two cases, the Court struck down Lanham Act provisions as uncons،utional s،ch restrictions.  In Tam, the Court struck down the Lanham Act’s prohibition on disparaging trademarks, allowing an Asian-American band to register “The Slants” as their trademark. Similarly, in Iancu v. Brunetti (2019), the Court invalidated the Act’s bar on imm، or scandalous marks, permitting registration of the trademark “FUCT” for a clothing line. In contrast, the Court concluded that the “names clause” at issue in Elster is both viewpoint-neutral and consistent with the historical tradition of trademark law.

Justice T،mas, writing for the majority, emphasized the long history of restricting trademarks containing names and the traditional notion that “a person has owner،p over his own name.” The Court concluded that this history and tradition were sufficient to render the names clause compatible with the First Amendment.  Alt،ugh recognized in the decision, I would have focused more on ،w the registration by Elster would have conflicted with competing rights of privacy (including NIL rights) held by T،p.

We might also recognize that witty t-،rt slogans are also likely outside the scope of traditional trademark rights.