The Trademark Problem of “TRUMP TOO SMALL”

Abstract

Consider the phrase—and my apologies for asking—“Trump too small.” It comes from the 2016 campaign for the Republican presidential nomination. A back-and-forth between Donald Trump and Florida Senator Marco Rubio culminated in a debate exchange about the size of Trump’s penis. This cultural low prompted one Steve Elster to seek registration of the trademark TRUMP TOO SMALL for use on shirts. The Patent and Trademark Office (“PTO”) refused, relying on section 2(c) of the Lanham Act, which bars registering a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual” absent written consent.

In re Elster reversed the PTO’s rejection of Elster’s application. The Federal Circuit ruled that applying the section 2(c) bar to TRUMP TOO SMALL would unduly burden Elster’s First Amendment rights. This is nonsense. If we are concerned with burdens on speech, the larger issue is the prospect that registering the mark would create opportunities to limit others’ ability to use the phrase as speech. But it is nonsense well-grounded in recent Supreme Court opinions that use the First Amendment to strike down the Lanham Act’s bars to registering disparaging and scandalous marks.

First Amendment implications aside, Elster highlights the bind facing the PTO when presented with low-quality trademarks. TRUMP TOO SMALL is not an effective brand name. When seen on a T-shirt, the phrase will naturally be read as an insulting commentary on the former President, not as a source indicator. But trademark law allows logos and slogans to be protected as merchandise. Even if the TRUMP TOO SMALL application is intended to support a merchandising play, that is not enough reason in and of itself to deny the registration.

But apparent merchandising efforts like TRUMP TOO SMALL are different in kind from merchandising related to sports or university paraphernalia, for they lack any pre-existing goodwill to monetize. In effect, many would-be merchandisers are free riders, seeking to reap where they have not sown by capitalizing on cultural moments or other circumstances unconnected to their efforts. Trademark law lacks an effective vocabulary for these situations, placing significant pressure on nebulous doctrines like “failure to function” that may not be able to bear the weight increasingly placed on them to screen out low-quality trademarks. In re Elster thus illustrates a problem relating not to the First Amendment but rather to the choice to make trademark doctrine the vehicle for vindicating markholders’ merchandising interests.