In Vidal v. Elster, the Supreme Court found the Lanham Act’s Names Clause does not violate the First Amendment, but rather works concurrently with it (See opinion).
The Names Clause, (15 U.S.C. §1052(c)), allows the Patent and Trademark Office (PTO) to bar a trademark from the Principal Register if the trademark contains the name of a living person without the person’s consent. In this instance, Steve Elster attempted to register TRUMP TOO SMALL, a phrase that appeared during the 2016 presidential debate between Senator Marco Rubio and former president Donald Trump. However, the PTO rejected Elster’s trademark application because Elster did not have Donald Trump’s consent to register his name as a mark, prompting Elster to allege that the Names Clause violates his First Amendment rights.
The Supreme Court recognized the Names Clause as a content-based, but viewpoint-neutral, restriction. While the Names Clause is based on the content (i.e., it regulates a person’s name being used), it is viewpoint-neutral because it does not discriminate against political, religious, or other types of views and beliefs. Although the Supreme Court decided unanimously that the Names Clause is not a First Amendment violation, there appeared to be disagreement on how to properly determine what makes a content-based but viewpoint-neutral trademark restriction constitutional.
The plurality looked to history and tradition and determined that the Names Clause and similar rules have a history of coinciding with the First Amendment. Therefore, the Names Clause was permitted to stand based on its strong history. Additionally, the plurality emphasized that their ruling was narrow and refrained from providing any future guidance, opting to handle similar issues on a case-by-case basis, rather than creating a blanket rule to determine constitutionality.
However, in their respective concurrences, Justice Amy Coney Barrett and Justice Sonia Sotomayor both argued that history alone does not and cannot suffice to determine a trademark restriction’s constitutionality. Additionally, Justice Barrett’s concurrence urged that content-based restrictions for trademarks should be presumed constitutional as long as they reasonably relate to the trademark system’s goals. In her concurrence, Justice Sotomayor took Justice Barrett’s argument a step further and proposed that the following factors be used to test a restriction’s constitutionality: (1) the distinction in the restriction reasonably relates to the purpose; and (2) the distinction is viewpoint neutral.
Nevertheless, the Court’s ruling authorizes the PTO to continue enforcing the Names Clause’s prohibition on registering a person’s name or likeness without their consent.
This IP Advisory was prepared by 2024 Summer Associate, Stefica Milor.
