Vidal v. Elster
602 U.S. 286 (2024)
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Rule of Law:
A viewpoint-neutral, content-based trademark registration restriction is constitutional if it is grounded in a long historical tradition of restricting the use of names in trademarks.
Facts:
- During a 2016 Presidential primary debate, an exchange occurred between then-candidate Donald Trump and Senator Marco Rubio.
- Following this debate, Steve Elster created the phrase "Trump too small."
- Elster sought to use this phrase on shirts and hats he intended to sell.
- The proposed mark used Donald Trump's name.
- Elster did not obtain written consent from Donald Trump to use his name in the trademark.
Procedural Posture:
- Steve Elster filed an application with the U.S. Patent and Trademark Office (PTO) to register the trademark 'Trump too small.'
- A PTO examiner refused to register the mark, citing the 'names clause' in 15 U.S.C. § 1052(c) because it used a living person's name without consent.
- Elster appealed the refusal to the Trademark Trial and Appeal Board (TTAB).
- The TTAB affirmed the examiner's refusal, rejecting Elster's argument that the names clause violated the First Amendment.
- Elster, as appellant, appealed the TTAB's decision to the U.S. Court of Appeals for the Federal Circuit, with the Director of the PTO as appellee.
- The Federal Circuit reversed the TTAB's decision, holding that the names clause was an unconstitutional restriction on free speech.
- The Director of the PTO successfully petitioned the U.S. Supreme Court for a writ of certiorari.
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Issue:
Does the Lanham Act's prohibition on registering a trademark that consists of or comprises a name identifying a particular living individual without their written consent, 15 U.S.C. § 1052(c), violate the First Amendment's Free Speech Clause?
Opinions:
Majority - Thomas, J.
No, the Lanham Act's names clause does not violate the First Amendment. Although the names clause is a content-based restriction on speech, it is viewpoint-neutral. Heightened scrutiny is not required because trademark law has always been inherently content-based and has coexisted harmoniously with the First Amendment. The restriction on trademarking another's name is firmly grounded in a historical tradition, rooted in the common law principles that a person has a property right in their own name and that trademarks must identify the source of goods. This history and tradition are sufficient to conclude the names clause is compatible with the First Amendment. The holding is narrow and does not establish a comprehensive framework for all content-based trademark restrictions.
Concurring - Kavanaugh, J.
No, the names clause is constitutional. This conclusion is correct particularly in light of the long history of restricting the use of another's name in a trademark. However, a viewpoint-neutral, content-based trademark restriction might be constitutional even without such a strong historical pedigree, a question that should be left for a future case.
Concurring - Barrett, J.
No, the names clause does not violate the First Amendment, but the majority's history-and-tradition-only analysis is flawed. The historical evidence for this specific rule is weaker than the majority claims. Instead, the proper standard is that content-based trademark restrictions are permissible so long as they are reasonable in light of the trademark system's purpose of facilitating source identification and preventing consumer confusion. The names clause is reasonable under this standard because using another living person's name without consent can create source confusion and unfairly exploit or damage that person's goodwill and reputation.
Concurring - Sotomayor, J.
No, the names clause is constitutional. The Court should not rely on a novel history-and-tradition test. Instead, it should apply established First Amendment precedent holding that when the government confers a benefit, like trademark registration, it may impose viewpoint-neutral, content-based conditions that are reasonable in light of the program's purpose. The purpose of the trademark system is to identify the source of goods. The names clause is a reasonable condition because it prevents consumer confusion and misappropriation of a person's goodwill, thereby serving the core purpose of trademark law.
Analysis:
This decision upholds the constitutionality of the Lanham Act's names clause, but the fractured opinions fail to establish a clear, comprehensive framework for analyzing future First Amendment challenges to viewpoint-neutral trademark restrictions. The majority's reliance on 'history and tradition' as a dispositive test creates a narrow, case-by-case inquiry for restrictions with a historical pedigree, but leaves open how to analyze novel restrictions. The concurrences' preference for a 'reasonableness' test, tied to trademark law's fundamental purposes, offers an alternative framework that may prove influential in future cases where a long historical analogue is absent.
