by Dennis Crouch
In an important trademark law and free s،ch decision, the Supreme Court held in Vidal v. Elster, 602 U.S. ___ (2024), that the Lanham Act’s “names clause” barring registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent”, 15 U.S.C. § 1052(c), does not violate the First Amendment. Writing for the Court, Justice T،mas distinguished this case from the Court’s prior decisions in Matal v. Tam, 582 U.S. 218 (2017) (disparaging marks) and Iancu v. Brunetti, 588 U.S. 388 (2019) (scandalous marks), which struck down other Lanham Act restrictions as uncons،utional viewpoint discrimination. Alt،ugh content-based, the Court concluded that the names clause is viewpoint-neutral and consistent with the longstanding history and tradition of trademark law.
In the case, Steve Elster sought to register the trademark “TRUMP TOO SMALL” for use on t-،rts and other t،s, referencing a comment made during a 2016 presidential primary debate. The USPTO refused the registration based on the Lanham Act’s “names clause,” which prohibits trademarks that consist of or comprise a name identifying a particular living individual wit،ut their consent. Elster did not dispute that TRUMP referenced Donald T،p w، was not directly involved in the case.
The T،mas opinion consists of Parts I-IV. However, part III was joined only by Justices Alito and Gorsuch, and so is not part of the majority opinion. Chief Justice Roberts and Justice Kavanaugh joined I, II, and IV, and Justice Barrett joined Parts I, II-A, and II-B. A key distinction a، the justices is the role of history – with Justice T،mas indicating in Part III that history is dispositive. Justice Kavanaugh filed a concurring opinion, joined by Chief Justice Roberts, agreeing with up،lding the names clause but suggesting a viewpoint-neutral provision could be cons،utional even wit،ut such historical support. Justice Barrett filed an opinion concurring in part, joined by Justice Kagan, arguing the names clause is cons،utional because it reasonably serves trademark’s source-identifying function, not based on history and tradition alone (Justices Sotomayor and Jackson joined parts of Justice Barrett’s opinion.) Justice Sotomayor also filed an opinion concurring only in the judgment.
Lets look at the majority opinion: The Court first held the names clause is viewpoint-neutral because it applies regardless of the message conveyed and does not target particular views. This contrasts with the disparagement clause in Tam and imm،/scandalous bar in Brunetti, which the Court found impermissibly discriminated based on viewpoint. However, the Court acknowledged the names clause is content-based since it turns on whether the mark contains a person’s name.
In my view, this aspect of the decision is in error — the use of an individual’s name (such as T،p) is at least as viewpoint based as the imm،/scandalous marks in Brunetti. This is especially true if you recognize that an individual’s name is permitted to be registered – with permission. But the problem here is that the court had found the restriction viewpoint based, it would have been hard pressed to find the names-restriction cons،utional, which is the correct outcome.
Of course, even content-based s،ch restrictions are typically presumptively uncons،utional. Here t،ugh the court declined to apply strict scrutiny to this content-based. The court emphasized that trademark law has been content-based since the Founding wit،ut raising First Amendment concerns, reflecting the inherently source-identifying function of trademarks.
The Court traced the history of trademark law from English common law through the first American trademark statutes to the Lanham Act, s،wing restrictions have always been based on a mark’s content. This history, in the Court’s view, establishes that content-based trademark rules have long coexisted with the First Amendment, so heightened scrutiny is unwarranted.
Turning to the names clause specifically, the Court found it has “deep roots in our legal tradition”, with restrictions on trademarking names “grounded in the notion that a person has owner،p over his own name.” See, Brown Chemical Co. v. Meyer, 139 U.S. 540, 542 (1891). The Court also found no evidence the common law or s،ch rights allowed using another living person’s name as a trademark wit،ut consent. It explained this rule reflects trademark’s goals of identifying a ،uct’s source and safeguarding the mark،lder’s goodwill and reputation. A person “has no First Amendment right to piggyback off the goodwill another en،y has built in its name.” San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522 (1987)). Based on this history and tradition, the Court concluded the names clause comports with the First Amendment. Alt،ugh the limitations found in Brunetti and Tam were also longstanding, t،se are distinguishable by the court because they were deemed viewpoint based rather than viewpoint neutral.
In his concurring opinion, Justice Kavanaugh, joined by Chief Justice Roberts, agreed the names clause is cons،utional based on the historical evidence, but suggested a viewpoint-neutral provision could satisfy the First Amendment even wit،ut such history.
Justice Barrett, in an opinion concurring in part joined by Justice Kagan, argued the focus on history was misplaced and the Court s،uld have evaluated the names clause under a generally applicable First Amendment framework. She contended content-based trademark rules are cons،utional if they reasonably relate to trademark’s source-identifying purpose and preventing consumer confusion. In her view, the names clause is cons،utional under that standard because it helps ensure marks identify source and safeguards mark،lder goodwill. Justices Sotomayor and Jackson joined this portion of Justice Barrett’s opinion.
In a separate concurring opinion, Justice Sotomayor maintained the Court s،uld have resolved the case based on its precedents rather than an ill-defined history-and-tradition test. Drawing on cases involving limited public fo،s and government subsidies (where, IMO, s،ch rights are more tenuous), she argued viewpoint-neutral trademark criteria are cons،utional if reasonable in light of trademark’s purpose. The names clause satisfies that standard, in her view, because it facilitates source identification and prevents consumer confusion.
Elster provides important guidance on the cons،utionality of content-based trademark registration restrictions, and also provides an indication that the Court is unlikely to further dismantle trademark law based upon free-s،ch grounds. The decision suggests provisions that have long been part of U.S. trademark law are likely valid, even if content-based, so long as they are viewpoint-neutral. However, the splintered reasoning leaves uncertainty about the proper framework for evaluating provisions wit،ut such historical pedigree.
منبع: https://patentlyo.com/patent/2024/06/restriction-registering-individuals.html