As we previously reported, the Supreme Court in June issued its opinion in Vidal v. Elster, a trademark case that attracted eight amicus briefs. In this case, the Court reviewed the Federal Circuit’s conclusion that the Lanham Act’s prohibition on registering marks that consist of or comprise a name identifying a particular living individual without that person’s consent violates the First Amendment. The Supreme Court disagreed. In an opinion authored by Justice Thomas, the Court decided that history and tradition establish that the provision in question does not violate the First Amendment. Notably, Justices Kavanaugh and Barrett both concurred in part and Justice Sotomayor concurred only in the judgment. This is our opinion summary.
Justice Thomas began by briefly discussing the procedural and factual background of the case:
Steve Elster sought to register the trademark “Trump too small,” accompanied by an illustration of a hand gesture, to use on shirts and hats. The mark draws on an exchange between then-candidate Donald Trump and Senator Marco Rubio during a 2016 Presidential primary debate.
The PTO examiner refused registration under the names clause because the mark used President Trump’s name without his consent. The Trademark Trial and Appeal Board affirmed, and it also rejected Elster’s argument that the names clause violates his First Amendment right to free speech. The Federal Circuit reversed, holding that the names clause violated the First Amendment. . . . The court first concluded that the names clause is a viewpoint-neutral, content-based restriction on speech subject to at least intermediate scrutiny. . . . It next concluded that the Government could not satisfy even intermediate scrutiny because the names clause does not advance any substantial governmental interest.
Justice Thomas started his analysis by explaining that, when enforcing the First Amendment’s prohibition against restricting or burdening expression because of its message, ideas, subject matter, or content, the Supreme Court’s “precedents distinguish between content-based and content-neutral regulations of speech.” The Court’s precedents, he continued, “distinguish further a particularly ‘egregious form of content discrimination’—viewpoint discrimination.”
With respect to the names clause, he explained that it “does not facially discriminate against any viewpoint.” Yet, he continued, “it is content based” because it “turns on the content of the proposed trademark—whether it contains a person’s name.” In particular, he noted, “[i]f the trademark does contain a person’s name, and the registrant lacks that person’s consent, then the names clause prohibits registration.”
Justice Thomas then addressed whether heightened scrutiny extends to a viewpoint-neutral trademark restriction that is content-based. “Although a content-based regulation of speech is presumptively unconstitutional as a general matter,” he noted, the Court had “not decided whether heightened scrutiny extends to a viewpoint-neutral trademark restriction.” On this point, he found, the most important fact is that “trademark rights have always coexisted with the First Amendment, despite the fact that trademark protection necessarily requires content-based distinctions.” After a long discussion of the relevant history, he concluded that it “demonstrates that restrictions on trademarks have always turned on a mark’s content.” And, he continued, the “longstanding, harmonious relationship” between trademark law and the First Amendment “suggests that heightened scrutiny need not always apply in this unique context.” Thus, he concluded, “[b]ecause of the uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment,” the Court “need not evaluate a solely content-based restriction on trademark registration under heightened scrutiny.”
Having concluding that heightened scrutiny does not apply to the names clause, Justice Thomas next declined to “delineate an exhaustive framework for when a content-based trademark restriction passes muster under the First Amendment.” Instead, he indicated, the Court would consider the relevant “history and tradition.”
In this regard, he noted that “[r]estrictions on trademarking names have a long history.” For example, he noted “no evidence that the common law afforded protection to a person seeking a trademark of another living person’s name.” Instead, he continued, “English courts recognized that selling a product under another person’s name could be actionable fraud.” And, he concluded, “[t]his common-law understanding carried over into federal statutory law.” In particular, he explained, “[t]he first federal trademark law contained a requirement that a trademark contain more than merely a name.” As for the rationale behind this law, he noted “[t]he restriction on trademarking names . . . reflects trademark law’s historical rationale of identifying the source of goods.”
Based on these principles, he explained, “a party has no First Amendment right to piggyback off the goodwill another entity has built in its name.” He concluded that “a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition.”
Justice Thomas went on to note the narrow holding of the Court. For example, he admitted, “a case presenting a content-based trademark restriction without a historical analogue may require a different approach.” But, he continued, the Court “need not develop such a comprehensive theory to address the relatively simple case before us today.”
Rejecting arguments made by Justice Sotomayor and Justice Barrett, Justice Thomas concluded that the fact “the names clause is grounded in a historical tradition” was “sufficient to demonstrate that it does not run afoul of the First Amendment.”
After noting the narrowness of the Court’s holding, Justice Thomas explained that the Court was reversing the Federal Circuit’s judgment.
Justice Kavanaugh concurred in part. He agreed “that the names clause is constitutional, particularly in light of the long history of restricting the use of another’s name in a trademark.” He noted, however, that “a viewpoint-neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree.”
Justice Barrett also concurred in part. She “disagree[d] with some of [the Court’s] reasoning.” First, she disagreed with the Court’s conclusion that there is “a historical analogue for the names clause.” Second, she disagreed with the Court’s view that “hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question.” She instead would ask whether the trademark restriction is “reasonable in light of the trademark system’s purpose of facilitating source identification.”
Justice Sotomayor concurred only in the judgment. Instead of the Court’s approach, she “would rely on this Court’s tried-and-tested First Amendment precedent.” She indicated that the Court “has held in a variety of contexts that withholding benefits for content-based, viewpoint-neutral reasons does not violate the Free Speech Clause when the applied criteria are reasonable and the scheme is necessarily content based.”