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Trump too Small– New SCOTUS Trademark Case

By Karsyn Koon (June 9, 2023)

Facts: The United States Supreme Court has recently granted certiorari to hear a case regarding U.S. trademark law. The dispute is between individual Steve Elster (a California attorney) and the United States Patent and Trademark Office (USPTO). Elster wishes to trademark the phrase “Trump too small” to put the slogan on t-shirts and hats as a method of pushing [KK1] his political commentary. He says the phrase comes from a presidential [KK2] primary debate in late February of 2016 in which Florida GOP Senator Marco Rubio mocked then-presidential candidate Donald Trump for his “small hands.” Rubio’s comments quickly became one of the highlights of the event. Elster justifies his efforts, claiming his goal is to “convey that some features of President Trump and his policies are diminutive.” His application to the USPTO was initially denied due to the use of the word ‘Trump,’ namely because the public may construe it as a reference to former U.S. President Donald Trump. The organization cited “Section 2(c) of the Lanham Act, that prohibits the registration of a trademark that uses the name of another living person without that individual’s permission.” (Howe, 2023). Therefore, the slogan requires Trump’s permission to be used. Elster appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB). His registration was denied once again.

Appellate Court Decision: In the case of in re Elster (26 F.4th 1328 (Fed. Cir. 2022)), the U.S. Court of Appeals for the Federal Circuit reversed the decision, citing a potential violation of Elster’s First Amendment rights [KK3] from the trademark denial. As stated [KK4] by the Federal Circuit in Mills v. Alabama and N.Y. Times Co. v. Sullivan, a major purpose of the First Amendment is to protect speech and discussion on government affairs and/or public questions. The Federal Circuit also derived their logic from “the right to criticize public men” is “[o]ne of the prerogatives of American citizenship,” as found in Baumgartner v. United States (322 U.S. 665, 673–74 (1944)). Additionally, the Federal Circuit rebuked the TTAB’s argument that the Lanham Act 60 Stat. 427 (codified at 15 U.S.C. § 1051) provisions are comparable to the restrictions placed on the First Amendment in a limited public forum, such as the inability to yell “fire” in a crowded theater. The opinion noted that there is no larger interest of public safety or government interest in this case, therefore the argument is null and void. In short, the specific right being challenged in this case is the freedom of speech concerning government topics and public affairs. The Federal Circuit claims that the central issue is “whether section 2(c) can legally disadvantage the speech at issue…” (In re Elster, 2022). They determined that yes, the section does lend a legal disadvantage to the speech at issue and therefore violates the Constitution.

Issues for the US Supreme Court: This [KK5] will be an interesting case for SCOTUS, as the Court decides on the merits between the Lanham Act and other trademark legislation versus the rights outlined in the First Amendment. Will Elster be allowed to use Trump’s name in his trademark? US Supreme Court granted cert to the case after hearing the argument from the Federal Circuit that the USPTO decision to deny Elster trademark registration was based on unconstitutional legislation (Section 2(c) of the Lanham Act). Previous court cases on similar matters include Matal v. Tam and Iancu v. Brunetti, both of which ruled provisions of the Lanham Act unconstitutional. The court must ascertain as to whether or not the rule laid out by Section 2 (c) of the Lanham Act restricting the use of individual names in trademarks is an infringement upon the First Amendment. It is important to note that this case focuses on public figures, or rather individuals who are widely known and recognized by society. The USPTO argues that it is not a violation of the Constitution, but rather a protection in and of itself by “protecting the named individual's rights of privacy and publicity and protecting consumers against source deception” (USPTO, 2022). Elster argues that strict scrutiny should apply to this case, and that the provisions highlighted in the Lanham Act do not express a government interest and therefore do not outweigh the First Amendment.

The Main Issue: “[t]he question here is whether the government has an interest in limiting speech on privacy or publicity grounds if that speech involves criticism of government officials— speech that is otherwise at the heart of the First Amendment,” (In re Elster, 2022).

This case may serve to limit legislation such as the Lanham Act as it applies to individual constitutional rights. The case will be heard by the Supreme Court next term. [KK6] 


de Vogue, A. (2023, June 5). Supreme Court Agrees to Hear Trademark Dispute Over “Trump too Small” Slogan. WENY News. https://www.weny.com/story/49033489/supreme-court-agrees-to-hear-trademark-dispute-over-trump-too-small-slogan\

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

In re Elster (26 F.4th 1328  February 24, 2022).

Presentation File Path: Documents – Office – Seminars – Recent Supreme Court Cases


 [KK2]Which one?

 [KK3]Specifcy which ones

Stopped corrections here [KK4]

 [KK5]Make main issues into bullet points [KK5]

 [KK6]Add name