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Last week, the Supreme Court issued an opinion in <a href="https://www.supremecourt.gov/opinions/23pdf/22-704_4246.pdf"><em>Vidal v. Elster</em>, No. 22-704 (June 13, 2024)</a>, holding the Lanham Act’s names clause does not violate the First Amendment.

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Steve Elster sought to register as a trademark the phrase “Trump too small” and an accompanying hand gesture for use on apparel. The phrase, a reference to Senator Rubio’s comment about Donald Trump’s hands during a 2016 presidential debate, ran afoul of the Lanham Act’s “names clause,” which prohibits trademarks that include the name of a living person without their consent. The Trademark Office refused registration on that basis and because the mark falsely suggested a connection with Trump. The Trademark Trial and Appeal Board upheld the examiner’s decision and rejected Elster’s argument that the names clause violated his First Amendment rights.

The Federal Circuit reversed, holding the names clause violated the First Amendment as applied to Elster. The court did not decide whether intermediate or strict scrutiny applied because it concluded the names clause fails under either standard. Applying intermediate scrutiny, treating the names clause as a content-based restriction on speech, the court concluded the clause failed to advance a substantial governmental interest. The court further characterized Elster’s mark as political speech, which the government has no legitimate interest in suppressing. Accordingly, the Federal Circuit held the names clause could not be used to bar registration of Elster’s mark.

The Supreme Court granted certiorari to resolve whether the Lanham Act’s names clause violates the First Amendment and held it does not. The Court reaffirmed its prior holdings that viewpoint-based trademark restrictions, including bans on disparaging or offensive marks, violate the First Amendment. The names clause, however, it deemed a content-based rule, not a viewpoint-based rule. Writing for the majority, Justice Thomas explained the names clause does not facially discriminate against any viewpoint and is consistent with the history and tradition surrounding trademark law. Historical justifications for the names clause, according to the Court, include use of trademarks for source identification and preservation of individuals’ reputations. The Court emphasized its holding is narrowly limited to assessment of the names clause and declined to offer a framework for assessing other content-based trademark restrictions.

Justices Sotomayor, Kagan, and Jackson concurred, arguing trademark laws are inherently content-discriminatory and declining to endorse the majority’s “history and tradition” analysis. Justice Barrett separately concurred, arguing viewpoint-neutral restrictions might be valid even absent history and tradition.

<em>Coauthored by Rachel Zimmerman Scobie &amp; Gabriel Bauer</em>

SCOTUS Confirms Names Clause Prevents Registration of “Trump too small” Mark

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