THE LANHAM ACT NAMES CLAUSE
To guide potential trademark owners and to foster strong protection for trademarks under U.S. law, the Lanham Act; 15 U.S.C. §1052, defines the types of trademarks and service which marks can be registered by whittling away those that are statutorily barred from registration. Among these exclusions from registration are immoral or scandalous marks and disparaging marks (§1052(a)), and marks consisting of or comprising the name, portrait or signature identifying a particular living individual except by his written consent (§1052(c)).
Restrictions on the registration of marks which fall under these prohibitions have been tested in recent years in cases decided by the U.S. Supreme Court, as they have the strong potential to violate the U.S. Constitution’s First Amendment which states that Congress “shall make no law…abridging freedom of speech.”
First up in 2017 was the Court’s decision in Metal v. Tam, 582 U.S. 218 (2017), in which the Court found the Lanham Act’s bar to registration of disparaging trademarks unconstitutional. This was followed in 2019 by the decision in Iancu v. Brunetti 588 U.S. 388 (2109) with the decision that a bar on the registration of “immoral or scandalous” marks was likewise unconstitutional.
This set the stage for the Court’s consideration of the issue in Vidal v. Elster 602 U.S. 286 (2024), in which the “names clause” of §1052(c) took its turn squaring off against the constitutional right to free speech.
In Vidal, a California lawyer named Steve Elster filed a federal trademark application for the mark TRUMP TOO SMALL for use on shirts, such as the one pictured (right).
FACT PATTERN
Elster chose the TRUMP TOO SMALL mark to “invoke[e] a memorable exchange between then President Donald Trump and Senator Marco Rubio from a 2016 presidential primary debate” and to “criticize” former President Trump.
Elster’s application was refused registration on the grounds that it violated the names clause, which prohibits registration of a mark that uses a living person’s name without their consent.
He appealed the examining attorney’s decision to the U.S. Trademark Trial and Appeal Board (TTAB), arguing the refusal violated his First Amendment rights because it prevented him from criticizing a public figure, which was a viewpoint-based restriction of free speech, similarly to that in Tam and Brunetti. The TTAB affirmed the decision of the examining attorney and held the refusal to register the mark under the names clause did not violate his First Amendment rights.
On appeal, the United States Court of Appeals for the Federal Circuit (CAFC), reversed, finding the Section 2(c) names clause violates the First Amendment and rejecting the government’s argument that the clause serves the substantial interest in protecting individuals’ privacy and publicity rights by prohibiting the trademarked speech.
THE SUPREME COURT DECISION
In a unanimous 9-0 decision, the Supreme Court held the names clause does not violate the First Amendment and was therefore, constitutional. Not so unanimous was the way the Justices reached that conclusion. Nevertheless, there was 9-0 agreement on a number of fundamental issues.
The court outlined the steps for enforcing the First Amendment’s prohibition against abridging the freedom of speech, starting with “distinguish[ing] between content-based and content-neutral regulations of speech.” A content-based regulation “target[s] speech based on its communicative content” and is presumed to be unconstitutional. “Viewpoint discrimination is a particularly ‘egregious form of content discrimination’ that targets not merely subject matter ‘but particular views taken by speakers on the subject…” a right that is at the foundation of the First Amendment.
It was because the speech considered in Tam and Brunetti were “viewpoint based,” namely, expressing a viewpoint (whether popular or not) of the “disparaging,” or “immoral or scandalous” marks, that they were protected under the First Amendment.
As for the names clause, the Court found that because it does not single out a trademark based on the specific motivating ideology or the opinion or perspective of the speaker, it does not “facially discriminate against any viewpoint.”
Writing for the majority, Justice Thomas stated:
“The names clause does not facially discriminate against any viewpoint. No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent. It does not matter ‘whether the use of [the] name is flattering, critical or neutral.’”
The decision further stated:
“The Government is thus not singling out a trademark ‘based on the specific motivating ideology or the opinion or perspective of the speaker.”
Elster argued the names clause restriction nevertheless operates as a free speech restriction in practice because “it is easier to obtain consent for a trademark that flatters a person rather than mocks him.”
The Court acknowledged that while a law can discriminate based on viewpoint in its practical operation, in this situation “there are many reasons why a person may be unable to secure another’s consent to register a trademark bearing his name. Even when the trademark’s message is neutral or complementary, a person may withhold consent to avoid any association with the goods, or to prevent his name from being exploited for another’s gain.”
In sum, the names clause does not violate the First Amendment because it prohibits registration of any trademark containing a living person’s name without consent, regardless of who the subject of the mark is, or whether it reflects negatively or positively about that individual. It cannot therefore be “viewpoint-based.”
As noted above, while the decision in Vidal was unanimous, the routes taken by the respective Justices to reach that decision were quite divided.
The majority leaned on the historical application of the names clause, grounded in the notion that a person has exclusive ownership of his or her name.
One concurring opinion drafted by Justice Cavanaugh, and joined by Justice Roberts, agreed with all but one point of the decision noting the Court could deal with future cases relating to viewpoint neutral, content-based trademark restrictions as they arise.
Finally, Justice Barrett, joined by Justice Kagan and joined in part by Justices Sotomayor and Jackson disagreed with the majority application of the history of the name clause to suggesting that “as long as they are reasonable in light of the trademark system’s purpose of facilitating source identification,” content-based restrictions should be permitted.
TAKEAWAY
While upholding the constitutionality of the names clause, the decision in Vidal does not really offer a broader roadmap for future cases in which viewpoint neutral, content-based restrictions are scrutinized for their constitutional validity. Those types of restrictions are therefore left to be addressed as they arise in the future.
