Don’t Say My Name: SCOTUS Affirms a Limitation on Trademark Law by Holding the Names Clause Constitutional

By: Carson Honeycutt, Vol. 23 Staff Writer

Introduction

In the wake of the June 2024 Supreme Court decision in Vidal v. Ester, the following is an analysis of the decision and what this means for trademark law in the future. 

Trump Too Small, Names Clause Too Constitutional

This year, the Supreme Court held in Vidal v. Elster that Section 2(c), or the “names clause,” of the Lanham Act that regulates trademark law does not violate the First Amendment. The Names Clause prohibits registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.”

            The USPTO refused registration of Elster’s trademark application of “Trump Too Small,” accompanied by an illustration of a hand gesture. The mark was a callback to an exchange between Senator Marco Rubio and Donald Trumpin a 2016 Presidential primary debate to use on hats and shirts.

            Despite the Names Clause being a blatant content-based restriction on speech, the Supreme Court held that the Names Clause was constitutional in a First Amendment challenge. Content-based restrictions on speech are typically presumptively unconstitutional, unless they can pass strict scrutiny with a compelling state interest. In contrast, viewpoint discrimination is a restriction that targets the views of the speakers on the subject matter, not the subject matter itself. 

Elster argues that the Names Clause is a viewpoint-based restriction on speech, and therefore violates the First Amendment. His reasoning is because it is easier to obtain consent for a trademark that is flattering rather than unflattering to the person whose name is in the mark. However, the Court asserts this case is different  from their notorious holdings in Matal v. Tam and Iancu v. Brunetti. The Court in Matal declared the Act’s bar on disparaging trademarks unconstitutional. The Court in Brunetti declared the Act’s bar on “immoral” or “scandalous” marks unconstitutional. 

Here, Elster is not able to use the name at all. It does not matter whether the content as related to the person’s name in the mark is positive, negative, or neutral. Further, the Names Clause has “deep roots in our legal tradition” and contributes to the purpose of trademark law, which is for the mark to serve as a source identifier.

The bottom line is the Names Clause is a content-based but viewpoint neutral restriction on trademarks, thus it is constitutional. Plus, although content-based discrimination typically is presumed unconstitutional and requires a strict scrutiny analysis, because the restriction is on a trademark, strict scrutiny is not necessary.

A Unanimous but Split Court

Although the Court came out in an unanimous holding, the Justices were divided, with three concurrences to supplement the majority opinion. Justice Barrett and Sotomayor offer a more involved concurrence and express the exhaustion of the “history and tradition” reasoning by Thomas. Barrett suggests a reasonability standard in which a “content-based criteria for trademark registration” does not violate the First Amendment so long as “they reasonably relate to the preservation of the mark owner’s goodwill and the prevention of consumer confusion.” Sotomayor, suggested a two-part analysis to be generally applicable in the evaluation of content-based trademark regulations. First ask “whether the challenged provision target particular views taken by speakers on a given subject . . . [I]f it is viewpoint neutral, [] the trademark registration bar need only be reasonable.” The Justices overlap in their want of a reasonability standard in evaluating trademark restrictions and suggestion to move away from the history and tradition test. It appears unsure whether the history and tradition test will remain intact in trademark registration restriction constitutional analyses.

What 2(c) in this decision?

This matters because the Supreme Court has created a new limitation in trademark law, despite previous rulings in Matal and Brunetti  in which the Court affirmed the strength of the First Amendment over Lanham Act trademark law regulations. The Court’s lack of strict scrutiny analysis could signal the end of the strength of the First Amendment protection against content-based restrictions in trademark law. 

It seems the Court has unlocked a separate category of speech specific to trademark. This category is one of immunity in which the Court can identify a trademark restriction, assert that it is content-based and viewpoint neutral, and bypass a First Amendment analysis that would typically result in strict scrutiny. Because most all regulations within the Lanham Act are content-based and viewpoint neutral (with the standout provisions addressed in Matal and Brunetti) it begs the question of the future of trademark regulations and where the Court will draw the line, if at all.  

Conclusion

The Supreme Court has effectively ruled that even public figures’ names cannot be put on a t-shirt with any sort of federal registration protection.  However, in the Vidal opinion, Justice Thomas mentions that the holding is narrow. This suggests some hope for those entrepreneurs like Elster that hope to create trademarks with potentially controversial content that currently runs afoul to the Lanham Act. 

            It is uncertain what may be deemed acceptable to trademark by the USPTO in the future, even with this narrow holding. However, if you are planning on filing a trademark application to capitalize on a viral moment that consists of a famous name, I would be hesitant. Unless you have Trump’s permission of course.