Bigger Than Trump’s Small Hands: SCOTUS Upholds Content-Based Regulation in Trademark Law in Fractured Fashion

By: Joseph Marcucci, Vol. 23 Staff Writer

A. The Court Upholds the Names Clause

The Supreme Court in Vidal v. Elster upheld the United States Patent and Trademark Office’s refusal to register a federal trademark for the phrase “Trump Too Small.” The court held that the USPTO’s refusal was warranted under the Lanham Act, specifically, under the Act’s names clause, which prohibits the registration of trademarks using the name, likeness, and identity of the individual without their written consent. Recognizing the law as a content-based restriction on speech, the court nonetheless upheld the clause, focusing on the long history and tradition of trademark law to support its constitutionality despite its content-based nature.

B. Emphasis on History and Tradition

In 2016, Steve Elster applied to register the trademark “Trump Too Small” following its usage in the 2016 primary debates. The reviewing attorney at the USPTO rejected the registration based on the Lanham Act’s names clause because Trump had not consented to the trademark containing his name. Elster argues that this clause infringed upon his right to free speech as protected by the First Amendment.

The Supreme Court’s opinion, written by Justice Thomas, applied First Amendment review to the trademark regulation in the absence of governing case law. The court recognized the content-based nature of the regulation–whether the proposed trademark contains a person’s name–since it “applie[d] to particular speech because of the topic discussed or the idea or message expressed.” Moreover, the court distinguished Vidal from related trademark cases of Matal v. Tam and Iancu v. Brunetti because the names clause is not a viewpoint-based regulation that singles out any trademarks “based on the specific motivating ideology or the opinion or perspective of the speaker.” The names clause is clearly interpreted to apply to all names, irrespective of any ideology, opinion, or perspective of the speaker.

In deciding whether heightened scrutiny extended to a content-based, but viewpoint-neutral trademark, the court emphasized the history and nature of trademark law to support a rejection of heightened scrutiny. Despite not being well established at the time of the founding, there is a longstanding history of trademark law, dating back to 1870, where courts have long continued to assess trademarks based on their content. This history properly demonstrates that restrictions on trademarks have always hinged on their content and have existed “harmoniously alongside the First Amendment from the beginning.” Moreover, restrictions on the practice of trademarking names have historically been grounded in the belief that a person has an ownership interest over their own name. The names clause legitimately recognizes this interest and is in line with the common law history of protecting the use of someone’s own name, image, and likeness.

Taken together, the court concluded that the USPTO’s action in denying the application was constitutional, affirmatively ruling that the trademark law that prohibited using an individual’s name without their consent is a constitutional, content-based restriction, on the First Amendment.

Several concurring opinions made separate compelling points. Justice Kavanaugh, joined by the Chief Justice, emphasized that there may be grounds other than “historical

pedigree” to uphold a viewpoint-neutral, content-based restriction. Justice Barrett aligned herself with Justice Kagan, Justice Sotomayor, and Justice Jackson, and preferred a less originalist approach. Justice Barrett criticized the majority for their reliance on an incomplete retelling of history and tradition, which she felt was insufficient to establish a necessary “historical analog.” Moreover, she went even further, stating that even if the “court’s evidence were rock solid,” she would not adopt this approach because “tradition is not an end in itself.” Instead, Justice Barrett opted for for a reasonableness standard. Arguing that such an inquiry would better reflect the “relationship between content-based trademark registration restrictions and free speech.”

C. Implications

Some have focused on the narrowness of the decision. Arguing that the key takeaway from this case is merely that persons seeking a trademark containing the name of a living individual must secure consent. While this is an accurate summation of the facts of the case, it ignores an important fracturing in the subtext of this 9-0 opinion. Others have emphasized that this case shows a very real divide between the majority and concurrences and that such disagreement highlights fracturing in the jurisprudential makeup of the court. The differing opinions identify a clear ideological split among the Justices on how to conduct constitutional analysis. The divide between the majority’s emphasis on history and tradition versus the concurrence’s call for a reasonableness standard shines a light into a “developing split” amongst the justices of the court on how much weight should be given to originalist principles of interpretation.

In conclusion, a narrow ruling on the constitutionality of content-based restrictions in trademark law, overlays a deeper issue. The divide on the proper weight to give originalist principles as a core tenet of constitutional jurisprudence.Undoubtedly, future decisions must further elucidate the Court’s commitment to originalism. Does this decision signal a less originalist majority than it is perceived to be? Or is it just about the size of Trump’s hands?