Steve Elster

Trademark Trial and Appeal Board

Jul 2, 2020

87749230 (T.T.A.B. Jul. 2, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Steve Elster
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Serial No. 87749230
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Steve Elster, Esq., pro se.

Amy Kertgate, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
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Before Rogers, Chief Administrative Trademark Judge, and
Zervas and Lynch, Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Steve Elster (“Applicant”) seeks registration on the Principal Register of the
mark TRUMP TOO SMALL, in standard characters, for:
Shirts; Shirts and short-sleeved shirts; Graphic T-shirts;
Long-sleeved shirts; Short-sleeve shirts; Short-sleeved
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shirts; Short-sleeved or long-sleeved t-shirts; Sweat
shirts; T-shirts; Tee shirts; Tee-shirts; Wearable garments
and clothing, namely, shirts in International Class 25.1
The Examining Attorney refused registration of Applicant’s proposed mark
under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that it
comprises matter that may falsely suggest a connection with President Donald J.
Trump, and under Section 2(c), 15 U.S.C. § 1052(c), on the ground that it comprises
his name without his written consent. Applicant has appealed, and the appeal has
been fully briefed.2
We affirm the Section 2(c) refusal, as explained below, and we need not reach the
refusal under Section 2(a)’s false association clause. See In re Society of Health and
Physical Educators, 127 USPQ2d 1584, 1590 (TTAB 2018).
II. Section 2(c) Refusal
Section 2(c) of the Trademark Act precludes, in relevant part, registration of a
mark that “[c]onsists of or comprises a name, portrait, or signature identifying a
particular living individual except by his written consent.” 15 U.S.C. § 1052(c). “A
key purpose of requiring the consent of a living individual to the registration of his
or her name, signature, or portrait is to protect rights of privacy and publicity that
living persons have in the designations that identify them.” In re ADCO Indus.-

1 Application Serial No. 87749230 has a filing date of January 10, 2018, and is based on
Applicant’s assertion of a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b).
2 The record includes Applicant’s original Brief, 11 TTABVUE, a Supplemental Brief, 16
TTABVUE, submitted following a remand sought by the Examining Attorney to add an
additional ground for refusal (the refusal under Section 2(a)), the Examining Attorney’s
Brief, 19 TTABVUE, and Applicant’s Reply Brief, 20 TTABVUE.
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Techs., L.P., 2020 USPQ2d 53786, *20 (TTAB 2020) (citations omitted). Another is
to “protect[] consumers against source deception.” Id. at *29.
For names, the statute requires that the matter sought to be registered include
the name of a particular living individual, rather than merely include words that
only by coincidence happen to be someone’s name but which the relevant public
generally would not recognize as that living individual’s name. Martin v. Carter
Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979). To address the scenario
in which the name would not be recognized as identifying the individual , Section
2(c) has been interpreted to mean that when a name appears in a proposed mark,
the written consent of the person with that name must be supplied where: (1) the
public would reasonably assume a connection between the individual and the goods
or services because the individual is so well known; or (2) the individual is publicly
connected with the business in which the mark is used. ADCO, 2020 USPQ2d 53786
at *22; see also Martin v. Carter Hawley Hale Stores, 206 USPQ at 932-33
(“requirement for consent depends upon a determination of whether the mark would
be recognized and understood by the public as identifying the person”).
Thus, for example, although the mark[s] “FANTA” and
“ARNOLD BRAND” happened to be the names of
individuals [i.e., Robert D. Fanta, a tax accountant, who
sought to cancel registrations of the mark “FANTA” for
soft drinks and for carbonated soft drink and syrup
concentrate for making the same, and Arnold Brand, a
patent and trademark attorney active in civic affairs, who
sought to cancel a registration of a mark containing the
words “ARNOLD BRAND” for fresh tomatoes] who were
undoubtedly well known in their own spheres,
nevertheless, in each case, it was found that the
individual in question would not be likely to suffer any
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damage from the registration of the mark at issue because
he had never attained any recognition in the field of
business in which the mark was used.
Id. at 933 (footnotes omitted) (citing Fanta v. The Coca-Cola Co., 140 USPQ 674
(TTAB 1964) and Brand v. Fairchester Packing Co., 84 USPQ 97 (Comm’r Pat.
1950)).
It is undisputed in this case, and we find, that Applicant’s proposed mark
includes the surname of President Donald J. Trump. Section 2(c) applies to a
proposed mark that includes a particular living individual’s surname if the
individual is known by that surname alone. In re Hoefflin, 97 USPQ2d 1174, 1176
(TTAB 2010) ((holding registration of the marks OBAMA PAJAMA and OBAMA
BAHAMA PAJAMAS barred under Section 2(c) because “this statutory sub-section
operates to bar the registration of marks containing not only full names, but also
surnames … so long as the name in question does, in fact, ‘identify’ a particular
living individual”); see also In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1638
(TTAB 2015) (relevant inquiry is “whether the public would recognize and
understand the mark as identifying a particular living individual”). The record in
this case includes extensive evidence that the public understands “Trump” alone as
a reference to President Donald Trump.3 Significantly, Applicant clearly concedes
that his mark “explicitly refers to declared presidential candidate and President

3 E.g., February 19, 2018 Office Action at 6-7; July 30, 2018 Office Action at 57, 65, 67-130;
February 25, 2019 Office Action at 5, 11, 24, 31, 54, 57, 59, 61, 63, 65, 69, 71-74; June 24,
2019 Office Action at 17, 25, 32, 41, 51, 116-42.
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Donald Trump.”4 The application record does not include a written consent from
President Trump, and Applicant makes no argument to the contrary.
Despite Applicant’s direct acknowledgment that his mark includes a name that
identifies a particular living individual without his consent, Applicant contends that
his mark does not violate Section 2(c) because the relevant public would not
presume a connection between President Trump and the goods. According to
Applicant, given “how [Donald Trump] depicts himself generally,” the mark in its
entirety is “the antithesis of what consumers would understand to be sponsored by,
approved by, or supported by Donald Trump.”5 Applicant essentially argues that
while President Trump strives to make a grandiose impression, Applicant’s mark as
a whole conveys that some features of President Trump and his policies are
diminutive.6 Therefore, Applicant maintains that his mark lacks the necessary
connection to the goods under Section 2(c).
Applicant couches the public perception of a connection as a separate inquiry
under Section 2(c), but as noted above, the analysis of a connection under the test
set forth above regarding Section 2(c) really is just part of determining whether the
public would perceive the name in the proposed mark as identifying a particular

4 16 TTABVUE 7 (Applicant’s Supplemental Brief).
5 16 TTABVUE 20 (Applicant’s Supplemental Brief).
6 Both Applicant and the Examining Attorney discuss and offer evidence that the 2016
presidential campaign included some widely publicized colloquies, some of which Mr.
Trump participated in, about the size of certain parts of his anatomy, such as his hands,
which then-presidential candidate Marco Rubio asserted were too small. July 8, 2018
Response to Office Action at 8-24; February 25, 2019 Office Action at 5-7, 24-27. Applicant
also submitted evidence of media articles about President Trump’s policies in terms of small
size, with headlines such as “The Shrinking of America” and “Trump Orders Largest
National Monument Reduction in U.S. History.” Id. at 26, 31.
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living individual. In this case, Applicant already has conceded this point. Unlike
Section 2(a)’s explicit statutory requirement that the matter in question “falsely
suggest a connection,” Section 2(c) prohibits registration of any proposed mark that
“consists of or comprises a name … identifying a particular living individual except
by his written consent.” 15 U.S.C. §§ 1052(a) & (c). The prohibition applies
regardless of whether there is a suggested connection. As explained in Martin v.
Carter Hawley Hale Stores, 206 USPQ at 933:
[I]t is more than likely that any trademark which is
comprised of a given name and surname will, in fact, be
the name of a real person. But that coincidence, in and of
itself, does not give rise to damage to that individual in
the absence of other factors from which it may be
determined that the particular individual bearing the
name in question will be associated with the mark as used
on the goods, either because that person is so well known
that the public would reasonably assume the connection
or because the individual is publicly connected with the
business in which the mark is used.
By analogy, the Board in Hoefflin held that an application to register OBAMA
PAJAMA for pajamas, sleepwear and underwear was barred by Section 2(c) even if
“the record does not support the conclusion that President Obama is in any way
connected with [such goods].” 97 USPQ2d at 1177. The Board addressed the fame of
a President of the United States, stating that “well-known individuals such as
celebrities and world-famous political figures are entitled to the protection of
Section 2(c) without having to evidence a connection with the involved goods or
services.” Id. The evidentiary record in this case clearly shows that President
Trump is extremely well known, not only because of his political office but also
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because of his prior celebrity.7 Moreover, even if some further connection to the
types of goods identified need be shown, the record reflects that through business
enterprises, President Trump’s surname has been used as a brand on a wide variety
of goods, including shirts.8
With a proposed mark such as this one that names someone very well-known
such as President Trump, and as Applicant has admitted, there is no question that
the public would view the name in question as the name of a particular living
individual. As in ADCO, decided on a very similar evidentiary record to the one in
this case, we find that the proposed mark including TRUMP “identif[ies] Donald
Trump, whose identity is renowned. By any measure, … Donald Trump is a well -
known political figure and a celebrity.” ADCO, 2020 USPQ2d 53786 at *24. Thus,
the necessary connection for purposes of Section 2(c) exists. Accordingly, in applying
Section 2(c) in this case, we need not probe for a Section 2(a)-type connection as
Applicant suggests, but rather just a showing that the relevant public would
recognize the name in the mark as that of a particular living individual. Therefore,
we reject Applicant’s contention that under Section 2(c) a “connection” is necessary,
but is foreclosed based on the theory that President Trump would not endorse the
message allegedly conveyed by TRUMP TOO SMALL.

7 February 19, 2018 Office Action at 45-64 (Time Magazine 2016 Person of the Year); July
30, 2018 Office Action at 51-52 (CBS Los Angeles article about altercation at Donald
Trump’s Walk of Fame Star); id. at 65-133 (various articles in mainstream media about
Donald Trump); June 24, 2019 Office Action at 9-144 (various articles in mainstream media
about Donald Trump).
8 February 19, 2018 Office Action at 14-16, 65, 76; February 25, 2019 Office Action at 52;
June 24, 2019 Office Action at 145-99; October 7, 2019 Office Action at 5-50.
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III. Constitutional Challenge to Section 2(c)
Applicant’s appeal focuses primarily on assertions that the statutory refusals to
register applied in this case are unconstitutional because they violate his right to
free speech under the First Amendment. Applicant alleges that Section 2(a)’s false
association provision and Section 2(c)’s particular living individual provision
constitute content-based restrictions on private speech, subject to strict scrutiny.
According to Applicant, the prohibitions are not narrowly tailored to a compelling
state interest, and cannot be justified, in particular when applied to current or
former presidents, or presidential candidates, whom Applicant claims have yielded
rights of privacy and publicity by seeking the office. Applicant insists that
“Presidential candidates and current and former Presidents also invite widespread
use of their names and identities in products and services that comment upon the
candidates and Presidents in personal and/or political terms.”9
The recent ADCO case on proposed marks that included TRUMP10 involved
similar constitutionality challenges to Section 2(c) and Section 2(a)’s false
association provision. ADCO Indus.-Techs., 2020 USPQ2d 53786 at *25. The Board
in ADCO stated that regardless of the USPTO’s inability to strike down statutory
provisions as unconstitutional, “a constitutional challenge may involve ‘many

9 16 TTABVUE at 21.
10 The marks at issue in ADCO were and .
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threshold questions . . . to which the [agency] can apply its expertise.” Id. at *26
(citing Elgin v. Dep’t of Treasury, 567 U.S. 1, 16, 22-23, 132 S. Ct. 2126 (2012)).
Accordingly, the Board explained why it does “not agree with Applicant’s challenges
based on our experience with Section 2 of the Trademark Act and the purposes
underlying it.” ADCO Indus.-Techs., 2020 USPQ2d 53786 at *27 (citations omitted).
As a threshold matter, the Board pointed out that these provisions of the
Trademark Act do not control an applicant’s use of a proposed mark, but only set
criteria for trademark registration. Id. Therefore, contrary to Applicant’s assertions,
Sections 2(a) and 2(c) are not direct restrictions on speech. Id. Next, the Board
addressed the viewpoint-neutrality of Section 2(a)’s false association clause and
Section 2(c), thereby distinguishing them from Section 2(a)’s disparagement and
immoral/scandalous provisions struck down by the Supreme Court as viewpoint-
discriminatory. Id. (“the Supreme Court pointedly refrained from extending its
holdings to any provisions of the Lanham Act that do not discriminate based on the
applicant’s viewpoint”), citing Iancu v. Brunetti, 139 S. Ct. 2294, 2019 USPQ2d
232043 at *7, n.*(2019) (addressing immoral/scandalous clause of Section 2(a),
noting “Nor do we say anything about how to evaluate viewpoint-neutral
restrictions on trademark registration.”) and id. at 2303 (Alito, J., concurring)
(emphasizing that the Court’s holding turned entirely on the conclusion that the
invalidated provision was viewpoint discriminatory); see also Matal v. Tam, 137 S.
Ct. 1744, 122 USPQ2d 1757 (2017) (addressing disparagement clause of Section
2(a)). As the Brunetti Court characterized the holding in Tam, “all Members of the
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Court agreed that the [disparagement] provision violated the First Amendment
because it discriminated on the basis of viewpoint.” Brunetti, 2019 USPQ2d 232043
at *2. Similarly, the Brunetti Court held that the immoral/scandalous provision
“infringes the First Amendment for the same reason: It too disfavors certain ideas.”
Id. Clearly, Section 2(c) differs, in that the prohibition applies in an objective,
straightforward way to any proposed mark that consists of or comprises the name of
a particular living individual, regardless of the viewpoint conveyed by the proposed
mark.
Finally, the Board in ADCO opined that even if the challenged provisions of
Section 2(a) and Section 2(c) were considered as restrictions on speech, they do not
run afoul of the First Amendment because “Congress acts well within its authority
when it identifies certain types of source-identifiers as being particularly
susceptible to deceptive use and enacts restrictions concerning them.” ADCO
Indus.-Techs., 2020 USPQ2d 53786 at *29 (citation omitted), citing S.F. Arts &
Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 107 S. Ct. 2971, 3 USPQ2d
1145, 1153 (1987) (“Congress reasonably could conclude that most commercial uses
of the Olympic words and symbols are likely to be confusing.”). Both of the statutory
provisions at issue “recognize[] the right of privacy and publicity that a living
person has in his or her identity and protect[] consumers against source deception.”
ADCO Indus.-Techs., 2020 USPQ2d 53786 at *29.
Thus, even if Section 2(c) were subject to greater scrutiny, as Applicant alleges,
the statutory provision is narrowly tailored to accomplish these purposes, and
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consistently and reliably applies to any mark that consists of or comprises a name,
portrait, or signature identifying a particular living individual except by his written
consent.
Decision: We affirm the refusal to register the proposed mark under Section
2(c) on the ground that it comprises the name of President Donald Trump without
his written consent. We do not reach the refusal to register under Section 2(a)’s
false association clause.