The Biden administration is asking the Supreme Court to halt the trademark “Trump too small” in a legal battle over political speech and First Amendment rights where a federal law bans the use of an official’s name without their permission for trademarks.
It creates the strangest of political bedfellows, as the Democratic administration of President Biden defends the rights of his chief Republican rival, former President Donald Trump.
But legal scholars say it’s typical for the federal government to defend trademark laws, even with the prospect of another Biden v. Trump election on the horizon.
At issue in the case to be argued Wednesday before the high court is part of the Lanham Act, which governs trademarks. The law says the U.S. Patent and Trademark Office should refuse to register a trademark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” The prohibition has been in effect since 1946.
Mr. Trump is not a party to the case, but his name will likely be dropped throughout the attorneys’ arguments. And it’s safe to say he did not consent to the phrase “Trump too small” being used in coordination with T-shirt sales.
“The government is defending the statutory provision passed by Congress that prohibits registration of certain marks. That this one involves a reference to Trump is really just a coincidence, though obviously makes for an interesting juxtaposition,” said Mark McKenna, a law professor at the University of California, Los Angeles. “In effect they are defending the ability of the government to protect Trump from criticism, even though that’s not the specific intent of the statutory provision.”
However, Fara Sunderji, a lawyer with Dorsey & Whitney, said the case has the potential to chill political criticism.
“Despite outward appearances, this case is really not about Trump or the size of his policies or [body parts],” said Ms. Sunderji. “This is a case about the intersection between trademark law, the First Amendment, rights of privacy, rights of publicity and political criticisms. The court has a good opportunity here to decide if the denial of trademark registrations restricts speech because the act of the denial would be chilling.”
Steve Elster, who brought the legal challenge, sought to use the phrase “Trump too small” on T-shirts following a 2016 presidential debate. He moved to trademark the phrase in 2018 in reference to Mr. Trump’s policies, according to court documents.
Mr. Elster was denied a trademark based on the fact that Mr. Trump did not consent to his name being used. In rejecting the trademark request, the government reasoned the bar on using names in trademarked phrases could confuse consumers, suggesting the person is linked to the product.
The appeals court, though, said the government’s denial of the trademark ran afoul of the First Amendment. Although the law isn’t viewpoint discriminatory — as it prohibits the use of a person’s name without written consent even for positive motives and messages, not just critical ones — the law is still stifling some disfavored speech, the appeals court said.
The Biden administration appealed the case to the high court, asking the justices to reconsider the appellate court’s position. The feds argue the phrase can still be used without the benefit of trademark registration, suggesting speech isn’t actually being stifled.
Mr. Elster has argued in his legal filings that the court should strike down the law since it has allowed trademarks that appear to be positive of famous politicians, but hasn’t allowed for much criticism, pointing to some examples in his legal brief.
“Under the clause, JOE 2020 has been registered, but not ’No Joe in 2024.’ HILLARY FOR AMERICA has also been registered. But not ’Hillary for Prison 2016.’ And BIDEN PRESIDENT is registered, while ’Impeach 46’ was denied,” Mr. Elster’s brief noted.
In recent years, the high court has been willing to strike a blow to trademark laws that refused to allow trademarks over disparaging remarks or that include immoral or scandalous remarks.
Harvard University law professor Rebecca Tushnet said the prohibition on these types of trademarks — like “Trump too small” — doesn’t really have an impact on fundamental free speech rights since it’s just denying the government benefits afforded to trademark protections and the phrase can still be used.
“No registration is required just to use it on merchandise,” Ms. Tushnet said.
Lisa Ramsey, a law professor at the University of San Diego, said the free speech rights of others seeking to use a trademarked phrase should be taken into consideration when dealing with trademarking a political phrase.
She noted that Mr. Trump sought to enforce his trademark on “Make America Great Again” to stop the sale of products with his campaign slogan.
“It sets a precedent for someone registering a political message,” Ms. Ramsey said. “It’s problematic from a free speech perspective.”
The justices will hear Vidal v. Elster on Nov. 1, but a decision is unlikely to come right away. A ruling is expected by the end of June.
• Alex Swoyer can be reached at aswoyer@washingtontimes.com.
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