The Trademark Trial and Appeal Board (TTAB) – for the second time in the past six months – has decided that a proposed mark incorporating the name “Trump” may not be federally registered as a trademark. Relying on the Lanham Act prohibition against registration of any mark that identifies “a particular living individual” without that person’s consent,[1] the board refused to register “Trump Too Small” for use on T-shirts and other apparel.

It is probably no coincidence that the application for the Trump Too Small mark was filed in January 2018, only months following the Supreme Court’s June 2017 decision in Matal v. Tam[2] declaring that the Lanham Act prohibition against registration of marks that “may disparage” individuals or institutions[3] violates the Free Speech Clause of the First Amendment. The TTAB had refused to register the rock band name “The Slants” because it could be considered disparaging to people of Asian descent. The Tam decision also vindicated the “Redskins” mark for the Washington football team, which the TTAB had canceled in 2014 because it could offend American Indians. The Supreme Court ruled that refusing the benefits of federal trademark registration because a mark could be considered by some to be disparaging amounts to unconstitutional discrimination against speech that “expresses ideas that offend.”

The applicant for Trump Too Small, an individual named Steve Elster, argued that his mark constituted “private, political speech” criticizing President Donald Trump and, therefore, was protected by the First Amendment under Matal v. Tam. (In 2019, the Supreme Court had similarly ruled in Iancu v. Brunetti[4] that denial of registration for the mark “Fuct” on the grounds that it was “scandalous matter”[5] violated the Free Speech Clause as “viewpoint discrimination.”) Elster submitted an image of a Trump Too Small T-shirt, leaving no doubt that his intent was to editorialize against Trump.

But the board emphatically rejected this “free speech” defense. The cited Supreme Court opinions struck down Lanham Act provisions outlawing registration of marks whose content could be considered disparaging or immoral, thereby imposing “viewpoint discrimination.” The TTAB distinguished the separate statutory ban on marks comprising a living individual’s name without consent as a strictly objective test that did not turn in any way on the content or viewpoint communicated by the mark. Either it does or it does not include an identifiable individual’s name. If it does, and the individual has not consented, registration is banned without regard to any “message” that the mark may attempt to send.

In sum, the board concluded that since application of this rule is unrelated to any subjective characterization of the mark’s “viewpoint” (that is, whether it is “disparaging” or “scandalous”), it cannot be unconstitutional viewpoint discrimination.

In February of this year, the TTAB had rejected another Trump-based mark – in that case, “Trump-It” for utility knives. The literal mark included a stylized graphic clearly simulating Trump’s “almost iconic” hair wave. That application was also filed after the Matal v. Tam opinion was published, and the applicant argued that the registration refusal violated its free speech rights.

But the board’s decision affirming rejection of the Trump-It mark focused as much on the concern that consumers might associate the Trump-It mark with the president (having in mind his many other well-known business interests) as on the more fundamental proposition that the mark included the Trump name without consent. Because the Trump-It mark with the hair flip graphic design was not overtly anti-Trump, the “confusion as to source or sponsorship” argument was at least plausible. In contrast, no one could possibly believe that the Trump Too Small mark was endorsed by the president.

Nevertheless, there is no reason to believe that the TTAB decision in the Trump-It matter would have been any different even if other evidence had shown that the mark was explicitly anti-Trump. The board’s decision discussed the applicant’s constitutional arguments at length.[6] It acknowledged that as an administrative tribunal, the TTAB has no authority to declare any statute unconstitutional, but it is authorized by recent case law to address constitutional issues. The board observed that the predicate for the recent Supreme Court decisions declaring some Lanham Act registration restrictions unconstitutional was that those provisions amounted to viewpoint discrimination. The provision prohibiting marks that clearly allude to a living individual’s name or identity without consent has no such defect.

The distinction under the Lanham Act between viewpoint discriminatory rejection (unconstitutional) and rejection based on unauthorized use of an individual’s name (lawful) relied upon by the TTAB in the Trump Too Small and Trump-It matters seems reasonable and cogent. But the Tam and Iancu opinions themselves reversed board decisions that, when issued, had been consistent with administrative and lower court precedents that had prevailed for decades. Trump Too Small applicant Elster has publicly announced that he will appeal the board’s decision (in either a new proceeding in the district court or a direct appeal to the Federal Circuit). Stay tuned.

[1] 15 U.S.C. §1052(c)

[2] Matal v. Tam, 582 U.S. __, 137 S.Ct. 1744 (2017)

[3] 15 U.S.C. §1052(a)

[4] Iancu v. Brunetti, 588 U.S. __, 139 S.Ct. 2294 (2019)

[5] 15 U.S.C. §1052(a).

[6] Trademark Trial and Appeal Board decision dated February 11, 2020, in Matters Serial No. 87545258 and Serial No. 87545533