U.S. Supreme Court Refuses Trademark for ‘Trump Too Small’

Can a trademark include another person’s name, especially that of a former U.S. president? This was the question before the U.S. Supreme Court in Vidal v. Elster, where Steve Elster sought to register the trademark “Trump too small,” a derogatory take on an infamous exchange between Donald Trump and Marco Rubio during a primary debate. Elster submitted an example of how he intended to use the trademark on T-shirts to the United States Patent and Trademark Office (USPTO): a photo of a T-shirt with TRUMP TOO SMALL above a rude hand gesture.

The USPTO denied the application because of the names clause, which prohibits marks that “[c]onsist of or comprise a name … identifying a particular living individual except by his written consent.” The Court rejected Elster’s constitutional challenge to the names clause on free speech grounds. Although the justices split on the reasoning, the Court unanimously agreed that the federal government could impose viewpoint-neutral restrictions on trademarks containing names of living individuals.

Trademark Restrictions and the First Amendment

Under the U.S. First Amendment, content-based regulation of speech (e.g. restricting discussion of a subject matter or topic) is presumptively unconstitutional, but may be justified only if the government proves that the regulation is narrowly tailored to serve compelling state interests. However, trademark regulation inherently requires content-based distinctions (i.e. protecting or disallowing certain trademarks based on what they are).

Trademark law’s purpose is to prevent confusion over the source of goods. The majority found that the long coexistence between trademark law and the First Amendment has allowed the two to develop without constitutional concern.

Names-Based Restrictions in Trademark Law

The Court held that there was a long history of restricting trademarks of names. Historically, trademark restrictions on names were based on the idea that a person has ownership and rights over their own name, such that they may not be excluded from one’s name by another’s trademark over it. Trademarks protect the owner’s goodwill and reputation. When the mark contains a person’s name, the connection between the mark and reputation is all the more strong.

The prohibition on including names in trademark registrations goes to both reputation and decency. Including a name in a trademark without consent implies a false endorsement, unjustly profits off of the person’s reputation, or worse, risks damaging their reputation through shoddy goods. Even if no reasonable consumer would think the person was affiliated with the trademark (as is the case with “Trump too small”), the law still protects people from commercialization of their names and reputations.

The Takeaways

The mark “Trump too small” presents an interesting case study in trademarks referencing famous individuals. While it can be an allusion to the former president, the word “trump” has other meanings (e.g. the dominant suit in a game of bridge, a tarot card, to supersede, etc.). In effect, the ruling finds that the association with the individual trumps (pun not intended) all the other possible meanings. The decision may close the door to trademark registrations with passing references to famous individuals or recognizable names.

The Canadian Perspective

The Canadian equivalent of the American names clause has a different scope of prohibition. Under Canadian law, “No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for […] any matter that may falsely suggest a connection with any living individual” (Trademarks Act, s. 9(1)(k)). 

To assess this, Canadian courts consider whether the living individual has “significant public reputation.” In considering an application to register the mark JACK BLACK, the Federal Court of Canada held that the mark did not falsely suggested a connection with the actor Jack Black.^[1] The court reasoned that “it has not been established that there is a Canadian public’s awareness of a person named Jack Black, let alone that that awareness reaches a level of significant public reputation,” suggesting a high bar for which living individual’s names or reputations are prohibited.

Canadian trademark examiners are instructed to “consider whether the average consumer of the associated goods or services would be misled by the use of the trademark into assuming that the individual has sponsored, approved or supported the applicant’s goods or services or that the applicant’s goods or services are a “spin-off” from the individual’s activities.”^[2] This suggests a narrower application than in the United States because uses that do not imply an endorsement, such as parodical or satirical use like “Trump too small,” may be permissible, though this is not expressly addressed.