In Vidal v. Elster, a unanimous Supreme Court of the United States reversed the US Court of Appeals for the Federal Circuit’s decision, holding that the Lanham Act’s names clause does not violate the First Amendment or trigger heightened scrutiny for judicial review. Although the Court was a 5-3-1 split on the reasoning, all the justices concurred in the holding.

The majority opinion, penned by Justice Clarence Thomas, used historical analogues to find that the names clause is constitutional. Under 15 U.S.C. §1052(c), the names clause prohibits the registration of a trademark that “consists of or comprises a name … identifying a particular living individual except by his written consent.” The Court noted that this decision was narrow, holding only that history and tradition establish that the names clause does not violate the First Amendment and making no claims about the constitutionality of other content-based, viewpoint-neutral trademark restrictions.

Trademark applicants, therefore, must still obtain consent from any living individual whose name is featured in their application. The Court’s narrow holding does not extend to any other content-based, viewpoint-neutral trademark restrictions, which if challenged, will require further analysis from the courts.

IN DEPTH

BACKGROUND

Steve Elster filed a US trademark application in 2018 for the mark “TRUMP TOO SMALL” for use on shirts. The phrase was a reference to words used in a 2016 Republican presidential primary debate between then-candidates Donald Trump and Senator Marco Rubio (R-FL). The US Patent & Trademark Office examining attorney, and subsequently the Trademark Trial & Appeal Board, refused registration of the mark on grounds that it clearly referred to former President Trump, and that Elster did not have written consent to use former President Trump’s name in violation of the names clause.

The Federal Circuit disagreed with the Board and concluded on appeal that the names clause is a viewpoint-neutral, content-based restriction on speech subject to at least intermediate scrutiny. With that standard of review, the Federal Circuit held that the government could not satisfy either intermediate or heightened scrutiny because the names clause does not advance any substantial governmental interest. After significant criticism of the Federal Circuit’s 2022 holding, the Supreme Court granted certiorari to answer the question of whether the names clause violates the First Amendment.

OPINION OF THE SUPREME COURT

Justice Thomas delivered the opinion of the Court, which Justices Samuel Alito and Neil Gorsuch joined in full. Justices John Roberts and Brett Kavanaugh joined all but Part III of the opinion, and Justice Amy Coney Barrett joined Parts I, II-A and II-B. Justices Kavanaugh, Barrett and Sonia Sotomayor each filed opinions concurring in the judgment but disagreeing with some or all of the majority’s reasoning.

Content Based but Viewpoint Neutral

The Court has previously distinguished between content-based and viewpoint-neutral regulations of speech, finding that content-based regulation is presumptively unconstitutional and may be justified only if the government proves that it is narrowly tailored to serve a compelling state interest. In Matal v. Tam and Iancu v. Brunetti, the Court ruled twice that content-based trademark restrictions that discriminate on viewpoint (in those cases, the viewpoint that the trademark at issue gives offense) violate the First Amendment. In Elster’s case, however, the Court confirmed that the names clause is content-based but viewpoint-neutral because it is not grounded on the specific motivating ideology, perspective or opinion of the speaker. This caused the Court, for the first time, to decide whether heightened scrutiny extends to a content-based but viewpoint-neutral restriction on federal trademark registration.

Referencing Historical Analogues

The Court admitted its decision “is narrow” and does not set forth a definitive framework for assessing the constitutionality of other content-based but viewpoint-neutral trademark restrictions. Instead, Justice Thomas cited history and tradition to explain why the names clause does not require heightened scrutiny. The Court chose a selection of early trademark laws and cases to show that trademark law has always restricted registration based on the mark’s content, remarking that:

[T]his history, reflected in the Lanham Act still today, demonstrates that restrictions on trademarks have always turned on a mark’s content. But, despite its content-based nature, trademark law has existed alongside the First Amendment from the beginning. That longstanding, harmonious relationship suggests that heightened scrutiny need not always apply in this unique context.

The Court summarized that the names clause has long-standing roots in American trademark law and that the names clause restriction serves established common law principles that continue to be relevant today – namely, that a person has ownership over their own name and may not be excluded from using their name because of another party’s trademark rights, and that a person cannot obtain a trademark of another living person’s name without their consent so as to protect the living person’s reputation and goodwill. The Court, therefore, opined that it need not look any further than this history and tradition to conclude that the names clause is compatible with the First Amendment.

CONCURRENCES

Although all nine justices agreed that the names clause is constitutional, there were several concurrences taking different approaches to the question, each largely in disagreement with the majority’s basis of the holding in “historical pedigree,” as stated in Justice Kavanaugh’s brief concurrence.

Justice Barrett’s concurrence, joined in part by Justices Elena Kagan, Sotomayor and Ketanji Brown Jackson, opined that the Court’s evidence, “consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause” and questioned why searching for historical analogues was the chosen method to answer the constitutional question. Citing her own historical account alongside the principles of trademark law, Justice Barrett’s concurrence suggested a bright-line rule that “content-based criteria for trademark registration do not abridge the right to free speech so long as they reasonably relate to the preservation of the mark owner’s goodwill and the prevention of consumer confusion.” The opinion stated that because the names clause exists to identify and not confuse consumers about the source of the goods, it is commensurate with the trademark system’s essential purpose.

Justice Sotomayor, joined by Justices Kagan and Jackson, also submitted a concurrence rejecting the historical analogue approach and endorsing an approach based on First Amendment precedent. Based on these precedents, Justice Sotomayor’s concurrence proffers its own two-step rule:

First ask whether the challenged provision targets particular views taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trademark system. Specifically, the trademark registration bar must reasonably serve its purpose of identifying and distinguishing goods for the public. If the challenged provision is both viewpoint neutral and reasonable, then it does not violate the Free Speech Clause.

Justice Sotomayor’s concurrence also highlights that refusing federal registration of a mark does not “impose a penalty” but merely “withholds a benefit.” Citing “various strands of precedent,” Justice Sotomayor posits that the Free Speech Clause permits governmental bodies to impose a “reasonable, viewpoint-neutral limitation” on a “state-bestowed entitlement.” In other words, Elster can continue to produce apparel with the TRUMP TOO SMALL phrase on it; he just will not receive the governmental benefit of a federally registered trademark.

Practice Note: The Court’s admittedly narrow opinion confirms that the names clause does not violate the First Amendment, but the Court does not provide a framework for assessing whether all content-based, viewpoint-neutral trademark restrictions are unconstitutional or when and how heightened scrutiny should be applied.

In light of this decision, trademark applicants should be careful of applying for federally registered marks containing the name of another living person without their express consent. 

Lisette Donewald contributed to this article.