June 15, 2023
World IP Review
In a case that could have huge implications for the Lanham Act, the slogan “Trump Too Small” is again in the spotlight. The Supreme Court of the United States (SCOTUS) announced that it is reviewing the U.S. Patent and Trademark Offices’ (USPTO) challenge of a U.S. Court of Appeals for the Federal Circuit ruling that overturned the USPTO’s decision refusing to grant trademark registration for the phrase.
Steve Elster, a California-based lawyer and activist, tried to register the trademark “Trump Too Small,” a phrase birthed during a 2016 presidential debate, so he could print it as a slogan on shirts and hats. The USPTO denied Elster’s application, citing that the mark contravened the Lanham Act by including the surname of a living individual without his knowledge or permission.
Under the act, section 2(a) prohibits registering a trademark that falsely suggests a connection with a person, while section 2(c) of the act prohibits registering a trademark that consists of a name identifying a particular individual without that person's consent.
Elster has consistently stated to the court that this is a battle over who has the right to criticize politicians in the marketplace, and that the office has burdened political speech “by granting public figures a monopoly over speech about them in the marketplace.”
Mark Sommers told World IP Review that this case diverges from Tam and Brunetti in one crucial aspect. “Based on the Court’s prior decisions, it would be reasonable to assume that the Supreme Court would similarly strike down the provisions of Trademark Act Section 2(c) that are at issue in Vidal v. Elster,” he said.
Further, Mark noted, the Lanham Act bars registration of the mark ‘Trump too Small’ not because of what Elster said, but because he sought to enlist the publicity of another well-known public figure. The Supreme Court now has a fresh “opportunity to distinguish the section.”
Read “Why ‘Trump Too Small’ Could be a Big Deal for the Trademarks Act”
Supreme Court of the United States (SCOTUS), United States Patent and Trademark Office (USPTO), Lanham Act
Commentary
World IP Day: EPO Reveals 33% Jump in Cleantech Inventions Over Five Years
April 26, 2024
Award/Ranking
Finnegan Named Firm of the Year at the 2024 Managing Intellectual Property Americas Awards
April 26, 2024
Award/Ranking
Finnegan Shortlisted for the 2024 Asian Legal Business Japan Law Awards
April 26, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.