Intellectual Property partner Jeffrey A. Wakolbinger spoke with Law360 about the potential outcome of a pending trademark application for the phrase "Trump Too Small" following a federal circuit court's recent ruling that reversed a decision denying trademark registration.

Steve Elster has sought to register "Trump Too Small" for use on t-shirts. The US Court of Appeals for the Federal Circuit concluded that the Trademark Trial and Appeal Board (TTAB) erred in denying Elster's application under Section 2(c) of the Lanham Act, which prohibits registration of a mark if it "consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent." The Federal Circuit determined that applying Section 2(c) to bar registration in that particular case was an unlawful restriction of free speech in violation of the First Amendment.

With the case returning to the TTAB, Jeff noted there is no guarantee that Elster will be successful in his attempt to register the "Trump Too Small" trademark. He explained that Elster's effort could fail if there is no showing that the phrase performs the function of a trademark in the manner in which it is used.

"Trademarks are not granted to award creativity or witticisms; they are, first and foremost, a badge of origin and symbol of goodwill," Jeff said. "A phrase can serve both functions, but not all statements screened onto a T-shirt can serve the function of a trademark."

"'Trump' TM Ruling Leaves Attorneys Grasping for Answers," Law360, March 3, 2022

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