A federal appeals court has said that an individual named Steve Elster has the right to register “Trump Too Small” for T-shirts.
The US Patent and Trademark Office had refused to register to Mr. Elster’s mark based on two different parts of the trademark law. One prevented so-called false association with another party, and the other prevented registering a mark that includes a living individual’s name without that person’s written consent. It will not come as a shock that President Trump never gave Mr. Elster his personal consent to file this trademark application.
Despite misconceptions that have boiled up since this case was decided, it clearly does not mean the death of trademark protection for marks which contain the name of political or even some public figures.
As much as courts have only recently decided the Trademark Office should not make judgments on possible trademarks which appear to be expressions of free speech, this and other recent decisions raise some fascinating questions. It seems to be sound policy for the Trademark Office to have to punt on cases where questions of free speech arise. But there has always been a line between legal property rights in trademarks, and free speech. It has never been ok to defend yourself against trademark infringement by relying on free speech. Why are you using “Coke” on your cola product? Hey, freedom of speech is the “Real Thing!” …No, you need to do better than that.
So, where will the Trademark Office draw the line? This decision does not say the Trademark Office may never refuse registration; it just says that a person with the notoriety of President Trump should not expect to be protected against uses of their name by others, for profit. Trump, unlike most politicians, was already a brand name before political life, and has a significant portfolio of “Trump” trademarks with commercial value. Is it possible a product called “Trump Too Small” could have positive connotations regarding goods or services exploiting the “Trump” brand name? Or is the only possible interpretation that this is political speech?
Second, there is a concept trademark law called “ornamental use” which, while still permissible under free-speech grounds, is not the type of use which can be protected as a trademark. That is, would a consumer somehow think that “Trump Too Small” was a particular brand, or rather just a political idea emblazoned on a T-shirt? If ornamental, there would be no issue here, because there is no trademark use. The T-shirt or cap is simply acting as a billboard.
The Trademark Office said that there were no conflicting marks found regarding “Trump Too Small.” This means the Trademark Office did not see any confusion with any of the “Trump” marks actually owned by Trump. The Trademark Office may have concluded that it was clear that this mark would not be confusing with the other previously registered “Trump” trademarks. But that is not necessarily an easy conclusion to reach. The Trademark Office certainly understood that this was a third-party effort to refer to the sitting president (the brand application was filed in 2017). The Trademark Office relied on prior cases which prohibited registration of terms such as “Obama Pajama” which they said created too direct an association with President Obama. The trademark owner responded saying the fact that this phrase seems to have been an insult remarking on the size of his hands had been hurled at the president on a number of occasions and did not directly require this refusal. Even more interestingly, the Trademark Office seemed to imply that this insult was well-known and had become a part of his reputation.
Further still, while the Trademark Office recognized the fact that Trump was the owner and seller of a number of different trademarks, did not cite any of these other “Trump” registered trademarks to support their refusal. Instead, somewhat contrary to their usual policy, they turned to evidence of “Trump” products in the marketplace to prove their point, and paid no attention to the fact that TRUMP is also a registered brand. Whether the “Trump Too Small” trademark application Mr. Elster filed actually was intended to function as a trademark was never addressed (perhaps because the trademark application never reached the stage where it was required to prove that the mark had been in use).
Now, the doors appear open to allow many pending trademark applications with “Trump” – or any other political figure – in the name. Pending right now in the Trademark Office are marks with arguably political messages, some for and some against the ex-President. The door is open for anyone to own marks which include the names of others. Right now, waiting in line at the Trademark Office are the pending trademark applications ranging from “Trump Take America Back,” to those which were filed for the marks “Indict The Trump Organization” and “I Miss Trump” (apparently an anti-Trump “sarcastic” mark). These applications were not rejected because they would be confused with one of dozens of marks owned by Donald Trump, his trademark holding company, or Ivanka; they were refused because they violated the portion of the trademark law which prohibited registration of a living person’s name without their permission.
Some of these trademarks are already on appeal and presumably the Trademark Office will back down based on this court ruling. Next up, if these marks are allowed, we will see whether the Trump organization argues that the marks interfere with their own lawful trademark rights and will lead to confusion and other business harm. This is going to be a potential trap. It might be easier for Trump (or others in the same situation) to win against their supporters than their critics. Think about it this way: the public could believe that a pro-Trump statement is authorized by Mr. Trump. Hence, confusion, because Trump was not the source of the mark. On the other hand, the public is more likely to understand a negative or critical term is less likely to actually come from the Trump camp. Hence, less confusion.
Any court (including the one that sits within the US Patent and Trademark Office) will have to decide not just the balance between free speech and trademark law, but also whether the public is going to believe that the products or services associated with a mark are owned, sponsored, or endorsed by that entity, or by the person whose name is part of the mark. If the Trademark Office had asked these trademark applicants right from the beginning whether the public believes these phrases represent a single source or brand of product, or if they see a T-shirt or cap as a medium for a message (like a billboard) but not a brand of product, the determination would be simple.