The U.S. Supreme Court recently heard argument in a third trademark case in which a denied registrant sought to overturn a provision of the Lanham Act on First Amendment grounds.

The mark at issue is “Trump Too Small.” First there was Tam in which the court held “The Slants” must be registered for a musical band even if it allegedly disparaged Asian-Americans. Next was Brunetti where the court required the U.S. Patent and Trademark Office to register “Fuct” for a clothing line, a salacious term if ever there was one. The Lanham Act’s bans on registration of salacious and disparaging marks were held to violate First Amendment rights because they were expressive speech.

Up now is Vidal v. Elster challenging the Lanham Act’s prohibition on the registration of a mark that identifies a living person without consent. Elster claims he is entitled to register “Trump Too Small” because of the mark’s double entendre meanings, relating to the size of Trump’s hands, noticed first by Sen. Marco Rubio in 2016, and to Trump’s  political perspective. The USPTO rejected registration because Lanham Act 2(c) bans registration of a mark consisting of the name of a living person without consent.

The arguments presented by the government and by Elster are at opposite ends of the proverbial spectrum.

Elster contends that by denying him registration the government engages in viewpoint discrimination because it would allow Trump registration of a political, viewpoint, statement, but not him. And because the act requires Trump to approve a third-party registration, only messages Trump approves can be registered as marks.

On this point Elster’s brief reminds the court that the USPTO registered an authorized-by-Clinton “Hillary for America,” but refused registration of a nonauthorized “Hillary for Prison” mark, a limitation on political speech directed at a very public figure, claims Elster. He wants the court to hold that this failure to register “Trump Too Small” cannot pass First Amendment muster, applying any of the three levels of constitutional scrutiny.

The government defends its refusal to register “Trump Too Small” on the grounds that Elster will suffer no harm from denial of registration as he still can maintain common law rights in the mark. The court, though, has already recognized a plethora of benefits conferred by registration over mere common law rights, such as national priority and presumptions of ownership and validity of the mark. Those important rights would not accrue under common law.

Of course, the government also claims there is no viewpoint discrimination because the statute bans registrations using a living person’s name without consent of the living person no matter the message. And finally, the government argues that allowing this registration using the ex-president’s name allows a third party to appropriate the commercial value of Trump’s identity.

And here’s the rub. Will the court find, as it has in Tam and Brunetti, that the registrant’s First Amendment rights are more important than Trump’s rights to authorize commercialization of his name or identity? If it does, it will most certainly do so first on the basis of the political viewpoint expression created by “Trump Too Small,” and second on the loss of important rights that registration provides over common law protection.

It should hold that the registration is expressive, political speech and the government cannot properly restrict this registration. Arguably, allowing registration of a mark containing the name of a living person might impact that person’s rights of publicity, which is a law that prevents use of someone’s identity for commercial purposes without consent.

The government’s right-of-publicity argument should also not stand because in some states rights of publicity last 100 years after death, and the Lanham Act only bans use of a living person’s name.

In Tam and Brunetti, the court struck down the registration prohibitions of Lanham Act 2(a) that allowed the USPTO to decide what was scandalous or salacious, and deny registration even of expressive speech. This case appears to build on those holdings because Elster’s purpose was to communicate his political disagreement and criticisms of Trump’s approach to running the country by selling merchandise conveying this message.

It should not matter that the message was printed on clothing sold for a premium price. What does matter is that government employees should not be deciding what expressive message should be given substantial benefits and which should not. To prevent this from happening, the court will need to find Lanham Act 2(a) unconstitutional, as it did 2(a).

James B. Astrachan is a partner at Goodell, DeVries, Leech & Dann, LLP and teaches trademark and unfair competition law at the University of Baltimore School of Law. 

This article was originally published in The Daily Record.