The Supreme Court on Thursday rejected a California lawyer's application to trademark the phrase “Too Small for Trump.”
The decision was unanimous in its ultimate outcome but deeply divided on its reasoning, with the justices debating whether the historical methodology introduced in recent Second Amendment cases should be used to decide First Amendment disputes.
The case involved a federal law that prohibits the registration of marks that “identify a particular living individual without the individual's written consent.”
“We hold only that history and tradition demonstrate that the particular restrictions before us do not violate the First Amendment,” Justice Thomas wrote for the five-justice court.
Justice Sonia Sotomayor, in a concurring opinion that read in some parts as a dissent, offered a scathing rebuke, saying that “the uncertainty of an inquiry into the Court's history and traditions can aptly be described as akin to attending a crowded cocktail party and trying to look over everyone's heads to find your friend.”
“Worse yet,” she continued, “the five-justice majority that examines tradition as definitive has found friends at a crowded party to which it was not invited. That majority has drawn definitive inferences from the historical evidence without guidance from the litigants or the courts below.”
In the trademark application, attorney Steve Elster said he wanted to convey the message that “certain features of President Trump and his policies are trivial.” Elster's T-shirts feature the phrase on the front and a list of Trump's positions on the back, such as “Civil Rights is Trivial.”
Justice Thomas matter-of-factly noted the basis for the citation: “The mark is based on an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 presidential primary debate,” he wrote, without elaborating.
Rubio, a Florida Republican, said Trump has “small” hands, adding: “You know what they say about people with small hands.”
During the presidential debate, Trump responded to Rubio's criticism.
“Look at those hands. Small hands, right?” Trump said, showing his hands. “And he said about my hands, 'If this is small, something else must be small too.' I guarantee you it's fine. I guarantee you.”
The issue in the case wasn't whether Elster could use the phrase on T-shirts or other items, but whether he could register it as a trademark.
The Patent and Trademark Office denied Elster's application, but a unanimous three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that the Patent and Trademark Office was obligated to grant registration under the First Amendment to the U.S. Constitution.
“The government has no legitimate publicity interest that would override the First Amendment protections afforded to the political criticism embodied in Elster's marks,” Judge Timothy B. Dyke wrote for the court. “Given the president's status as a public official and because Elster's marks convey his opposition to and criticism of the then-president's approach to governance, the government has no interest in prejudicing Elster's statements.”
The Supreme Court has previously ruled that other provisions of trademark law violate the First Amendment, but Justice Thomas wrote that those cases involved opinion-based discrimination.
For example, in 2019 it rejected a provision that would have banned the registration of “immoral” or “scandalous” trademarks.
The case concerned clothing sold under the brand name FUCT. When the case was heard, government lawyers told the judge that the word “corresponds to the past participle form of typical slang in our culture.”
Justice Elena Kagan, writing for the six-justice majority, did not dissent, but she said the law was unconstitutional because it “disadvantages certain points of view.”
A fundamental principle of the First Amendment, she wrote, is that the government may not discriminate based on the speaker's views.
In 2017, an eight-judge Supreme Court panel unanimously struck down another section of the trademark law that banned marks that disparage people, living or dead, or “symbols of organizations, beliefs or nations.”
The decision in Matal v. Tam involved an Asian American dance rock band called the Slants. The Court split 4-4 on most of the reasons for the decision, but all justices agreed that the provision at issue in the case was unconstitutional because it favored one side or the other based on the speaker's viewpoint.
Justice Thomas wrote that the new case, Vidal v. Elster, No. 22-704, is different: The provision at issue applies to both positive and negative references to living individuals and does not discriminate based on viewpoint.
But that wasn't the end of the matter. As Justice Thomas noted in his comprehensive 2015 decision, Reed v. Town of Gilbert, even content-based laws are presumptively unconstitutional.
On the issue of trademarks, at least, he appeared to reverse that position on Thursday. He based his conclusion on an extensive review of historical restrictions on trademarking the name.
“This history and tradition are sufficient to conclude that the Name Clause — content-based but viewpoint-neutral trademark restrictions — is compatible with the First Amendment,” Justice Thomas wrote. “We need not look any further in this case.”
Justice Sotomayor, joined by Justices Kagan and Ketanji Brown Jackson, agreed that the provision is constitutional. But she said the majority's reasoning was worrying.
“This Court has never applied such a history and tradition test to a free speech challenge,” she wrote.
Justice Sotomayor noted that this standard was borrowed from the 2022 decision in New York State Rifle Association v. Bruen. “The majority seeks to reassure litigants and lower courts that the 'history-oriented approach' here is both sensible and workable,” she wrote.
Justice Sotomayor said the fallout from Bruen showed the new approach was wrong: “One need only read some of the lower court decisions that have applied Bruen to see the confusion this Court has created,” she wrote.