{"id":5507,"date":"2025-03-10T18:42:25","date_gmt":"2025-03-10T18:42:25","guid":{"rendered":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/?p=5507"},"modified":"2025-03-23T20:14:30","modified_gmt":"2025-03-23T20:14:30","slug":"dont-say-my-name-scotus-affirms-a-limitation-on-trademark-law-by-holding-the-names-clause-constitutional","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/dont-say-my-name-scotus-affirms-a-limitation-on-trademark-law-by-holding-the-names-clause-constitutional\/","title":{"rendered":"Don\u2019t Say My Name: SCOTUS Affirms a Limitation on Trademark Law by Holding the Names Clause Constitutional"},"content":{"rendered":"\n

By: Carson Honeycutt<\/a>, Vol. 23 Staff Writer<\/p>\n\n\n\n

Introduction<\/strong><\/p>\n\n\n\n

In the wake of the June 2024 Supreme Court decision in\u00a0Vidal v. Ester<\/em>, the following is an analysis of the decision and what this means for trademark law in the future.\u00a0<\/p>\n\n\n\n

Trump Too Small, Names Clause Too Constitutional<\/strong><\/p>\n\n\n\n

This year, the Supreme Court held in Vidal v. Elster<\/em><\/a> that Section 2(c), or the \u201cnames clause,\u201d of the Lanham Act that regulates trademark law does not violate the First Amendment. The Names Clause<\/a> prohibits registration of a mark that \u201c[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.\u201d<\/p>\n\n\n\n

            The USPTO refused registration of Elster\u2019s trademark application<\/a> of \u201cTrump Too Small,\u201d accompanied by an illustration of a hand gesture. The mark was a callback to an exchange between Senator Marco Rubio and Donald Trump<\/a>in a 2016 Presidential primary debate to use on hats and shirts.<\/p>\n\n\n\n

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

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<\/em><\/a> <\/em>and Iancu v. Brunetti<\/em><\/a>.<\/em> The Court in Matal<\/em> declared the Act\u2019s bar on disparaging trademarks unconstitutional. The Court in Brunetti <\/em>declared the Act\u2019s bar on \u201cimmoral\u201d or \u201cscandalous\u201d marks unconstitutional. <\/p>\n\n\n\n

Here, Elster is not able to use the name at all. It does not matter whether the content as related to the person\u2019s name in the mark is positive, negative, or neutral. Further, the Names Clause has \u201cdeep roots in our legal tradition\u201d and contributes to the purpose of trademark law, which is for the mark to serve as a source identifier.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

A Unanimous but Split Court<\/strong><\/p>\n\n\n\n

Although the Court came out in an unanimous holding, the Justices were divided, with\u00a0three concurrences<\/a>\u00a0to supplement the majority opinion. Justice Barrett and Sotomayor offer a more involved concurrence and express the\u00a0exhaustion of the \u201chistory and tradition\u201d reasoning by Thomas<\/a>. Barrett suggests a\u00a0reasonability standard<\/a>\u00a0in which a \u201ccontent-based criteria for trademark registration\u201d does not violate the First Amendment so long as \u201cthey reasonably relate to the preservation of the mark owner\u2019s goodwill and the prevention of consumer confusion.\u201d Sotomayor, suggested a two-part analysis to be generally applicable in the evaluation of content-based trademark regulations. First ask \u201cwhether 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.\u201d 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.<\/p>\n\n\n\n

What 2(c) in this decision?<\/strong><\/p>\n\n\n\n

This matters because the Supreme Court has created a new limitation in trademark law, despite previous rulings in Matal<\/em><\/a> <\/em>and Brunetti<\/em> <\/a> in which the Court affirmed the strength of the First Amendment over Lanham Act<\/a> trademark law regulations. The Court\u2019s lack of strict scrutiny analysis could signal the end of the strength of the First Amendment protection against content-based restrictions in trademark law. <\/p>\n\n\n\n

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\u00a0Matal\u00a0<\/em>and\u00a0Brunetti<\/em>) it begs the question of the future of trademark regulations and where the Court will draw the line, if at all.\u00a0\u00a0<\/p>\n\n\n\n

Conclusion<\/strong><\/p>\n\n\n\n

The Supreme Court has effectively ruled that even public figures\u2019 names cannot be put on a t-shirt with any sort of federal registration protection.  However, in the Vidal<\/em><\/a> <\/em>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. <\/p>\n\n\n\n

            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\u2019s permission of course.<\/p>\n","protected":false},"excerpt":{"rendered":"

By: Carson Honeycutt, Vol. 23 Staff Writer Introduction In the wake of the June 2024 Supreme Court decision in\u00a0Vidal v. Ester, the following is an analysis of the decision and what this means for trademark law in the future.\u00a0 Trump Too Small, Names Clause Too Constitutional This year, the Supreme Court held in Vidal v. Elster that …<\/a><\/p>\n","protected":false},"author":10,"featured_media":5549,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":[],"categories":[396,398],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts\/5507"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/users\/10"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/comments?post=5507"}],"version-history":[{"count":4,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts\/5507\/revisions"}],"predecessor-version":[{"id":5550,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/posts\/5507\/revisions\/5550"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/media\/5549"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/media?parent=5507"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/categories?post=5507"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/firstamendmentlawreview\/wp-json\/wp\/v2\/tags?post=5507"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}