By Madeline MaCabe
On June 13, 2024, the U.S. Supreme Court held that the Lanham Act’s name clause does not violate the First Amendment. The Vidal v. Elster, 602 U.S. ___ (2024), decision marked the third time in recent years the Court has ruled on whether certain limitations on trademark registrations outlined in section two of the Lanham Act, 15 U.S.C. § 1052, violate the First Amendment.
For instance, in 2017, the Court found that the Lanham Act's bar on registering disparaging marks violated the First Amendment in Matal v. Tam, 582 U.S. 218 (2017). Moreover, two years later, in Iancu v. Brunetti, 588 U.S. 388 (2019), the Court determined that the bar on registering immoral or scandalous trademarks violated the First Amendment. Both cases dealt with “viewpoint-based” restrictions, which are regulations that target a particular view taken by the speaker and are generally subject to heightened scrutiny.
In Vidal v. Elster, the Court considered the constitutionality of a content-based but viewpoint-neutral trademark restriction for the first time. Section 2(c) of the Lanham Act, the so-called "names clause," prohibits the registration of a mark that “consists of or comprises a name… identifying a particular living individual except by his written consent.”
Background
The plaintiff in this case, Steve Elster, filed a trademark registration in 2018 for the mark “Trump Too Small” to be used on T-shirts and hats. The mark was inspired by an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 presidential primary debate.
The Patent and Trademark Office refused to register Elster’s mark because Elster did not obtain former President Trump’s consent, and therefore, the mark violated the names clause. In response, Elster argued that the names clause violated his First Amendment right of free speech. The Trademark Trial and Appeal Board rejected this argument and affirmed the refusal of the mark.
Elster then appealed to the Federal Circuit, which reversed the decision and held that the names clause did, in fact, violate the First Amendment. The court’s rationale was that the names clause is a view-point neutral, content-based restriction on speech subject to, at a minimum, intermediate scrutiny. Moreover, the Federal Circuit ruled that the government could not satisfy intermediate scrutiny because the names clause does not advance any substantial government interest.
Opinion of the Court
The Supreme Court ruled that the USPTO refusing to register the mark “Trump Too Small” did not violate the First Amendment. The majority, delivered by Justice Thomas, applied a historical analysis to reach this decision, noting that trademark rights have always coexisted with the First Amendment. Moreover, the majority stated that trademarks containing names have been subject to restrictions throughout history, rooted in the notion that a person should have exclusive ownership over their name. The majority stated that this history and tradition are sufficient to conclude that the names and the First Amendment are compatible, yet it emphasized the narrowness of the decision.
The Court stated it was not setting forth a comprehensive framework for judging the constitutionality of all content-based but viewpoint-neutral trademark restrictions. According to the Court's opinion, the question of whether a “viewpoint-neutral, content-based trademark restriction is constitutional without such a historical pedigree” would possibly be addressed in a future case.
The Concurrences
While all the Justices agreed that the names clause was constitutional, they did not all agree on the reasoning behind the decision. While three differing concurrences were filed, they all agreed that the Court has “never applied this kind of history-and-tradition test to a free-speech challenge” and disagreed with the reliance on the historical approach taken by the majority.
Justice Barrett, joined by Justices Kagan, Sotomayor, and Jackson, specifically called for a standard to be established grounded in trademark law and First Amendment precedent to determine when content-based trademark restrictions are permissible.
Takeaways
Since the Court has left an unanswered question of the how to determine the constitutionality of other viewpoint-neutral, content-based trademark restrictions, how the Court will approach future cases is unclear.
Nonetheless, this case, in upholding the names clause of the Lanham Act, serves as a reminder that prior to seeking federal trademark protection for a mark containing the name of a living individual, consent must be obtained from the individual.
As for Mr. Elster, despite the inability to obtain trademark protection for "Trump Too Small," the decision does not bar him from selling the t-shirts bearing the phrase, which are still available online for $24.99.
Sources:
https://www.lexology.com/library/detail.aspx?g=096bef00-4c1f-41e9-9eb1-2660f4279946