SCOTUS: You don't have a First Amendment right to register another person's name as a trademark

Earlier today the United States Supreme Court held that the First Amendment does not bar a provision in federal law that restricts a person from registering another person's name as a trademark without that other person's consent. The case is Vidal v. Elster, No. 22-707.

What the Names Clause Says

The federal law that governs trademarks - the Lanham Act - contains a “names clause,” which states that the United States Patent and Trademark Office (USPTO) may not grant a trademark registration for any mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.”

A Trump-Inspired Lawsuit

In 2018, Steve Elster filed an application with the USPTO to register the mark TRUMP TOO SMALL for use on shirts and other clothing. The examining attorney at the USPTO refused to register the mark, citing to the names clause. Elster appealed the refusal to the Trademark Trial and Appeal Board (TTAB), which agreed with the examining attorney. Unsatisfied with his lack of success with the USPTO, Elster sought review with the Federal Circuit Court of Appeals. That court agreed with Elster and reversed the TTAB's decision. The court held that the names clause violated Elster's First Amendment right to free speech.

The Supreme Court took up the case. It reversed the Federal Circuit's decision, and held that the names clause does not violate the First Amendment.

The First Amendment and Trademark Law

The court observed that in general, the First Amendment prohibits the government from restricting or burdening expression because of the expression's message, ideas, subject matter, or content. Accordingly, when a court looks at a law that restricts speech - like the names clause does - it must determine whether the restriction is "content-based" or "content-neutral". Among content-based restrictions, "viewpoint-based" restrictions are particularly egregious.

In this case, the court held that the names clause is indeed content-based (it "turns on the content of the prosed trademark - whether it contains a person's name"). But unlike a couple of other recent free speech trademark cases (Matal v. Tam, 582 U. S. 218 (2017) and Iancu v. Brunetti, 588 U. S. 388 (2019)), the court held the restriction in the names clause is not viewpoint-based. "No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent."

What Standard Applies?

This case is the first time that SCOTUS had considered a content-based but viewpoint-neutral trademark restriction. And in doing so, the court provided a bit of a history lesson on how trademark law has evolved in the United States, noting that all along, trademark law restrictions have been content-based. Taking note of the "longstanding, harmonious relationship" between the First Amendment and trademark law, the court examined how it should evaluate the names clause to see whether it violates free speech rights. A viewpoint-based restriction would trigger heightened scrutiny (the regulation must be narrowly tailored to serve a compelling government interest). But in the case of the names clause, the court held that such heightened scrutiny was not necessary because of the "history and tradition" of how "trademark rights and restrictions can 'play well with the First Amendment.'"

For example, the court observed how, at common law, one could not claim exclusivity in his own personal name in relation to other individuals bearing the same name. A New York case in 1867 involved two men, each named John Faber, who both sold pencils using that name. The court in that case "declined to allow one man to effectively trademark the other man's name."

From these notions, the court noted that it saw "no evidence that the common law afforded protection to a person seeking a trademark of another living person's name." And "[t]o the contrary, English courts recognized that selling a product under another person’s name could be actionable fraud."

Moreover, the rationale embodied in the common law and in the names clause bore on how trademark law serves to identify the source of goods. "By barring a person from using another’s name, the names clause reflects the traditional rationale of ensuring that consumers make no mistake about who is responsible for a product."

Furthermore, the name clause deals with an individual's reputation. "By protecting a person’s use of his name, the names clause 'secur[es] to the producer the benefits of [his] good reputation.'"

"History and Tradition" Rule the Day

So the court held that this history and tradition establish that the names clause does not violate the First Amendment. It should be noted that although all nine justices agreed on the outcome (that the portion of the statute is not unconstitutional), Justices Sotomayor and Barrett in particular thought tests other than "history and tradition" should guide the analysis.

Justice Sotomayor's proposed test would would pull strands of precedent together to conclude that heightened scrutiny does not apply to trademark registration because it is a government initiative or benefit. And Justice Barret would apply the sort of test used when evaluating free speech rights in a limited public forum.

In any event, the court held that its decision in this case is "narrow". It expressly stated that it does not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. It also stated that it did not suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. "We hold only that history and tradition establish that the particular restriction before us, the names clause in [15 U.S.C.] §1052(c), does not violate the First Amendment."

Vidal v. Elster, No. 22-707 (June 13, 2024)