Supreme Court Decides Vidal v. Elster

On June 13, 2024, the U.S. Supreme Court decided Vidal v. Elster, No. 22-704, holding that the “names clause” of the Lanham Act, prohibiting registration of a trademark that consists of or comprises a name identifying a particular living individual except by his written consent does not violate the First Amendment.

Following the presidential primary debates of 2016, Steve Elster sought to federally register the trademark “Trump too small,” accompanied by an illustration of a hand gesture, to use on shirts and hats. Since then-candidate Donald Trump had not consented to the registration of a trademark containing his name, an examiner from the U.S. Patent and Trademark Office (PTO) refused the registration based on the Lanham Act’s “names clause.” Arguing that the “names clause” infringed on his right to free speech, Elster appealed to the Trademark Trial and Appeal Board, but it affirmed the PTO examiner’s decision. Elster then appealed to the U.S. Court of Appeals for the Federal Circuit, which agreed with Elster that the names clause violates the First Amendment. The PTO appealed the Federal Circuit’s ruling to the Supreme Court.

The Supreme Court reversed, holding that even though it constitutes a content-based restriction on speech, the names clause is constitutional. The Court noted that its First Amendment jurisprudence distinguishes between regulations on speech that are based on the content of the speech and those that are content-neutral. The Court’s precedents further distinguish among content-based regulations that discriminate based on the speaker’s viewpoint from those that do not. A viewpoint-based regulation is a particularly egregious form of content discrimination that targets not merely a subject matter but particular views taken by speakers. Traditionally, a content-based regulation is presumptively unconstitutional, subject to heightened scrutiny, and may be justified only if the government proves it is narrowly tailored to serve compelling state interests. The names clause is content-based since it turns on whether the proposed trademark contains a person’s name, but it does not discriminate against any viewpoint.

The Court examined the history of trademark rights, noting that such rights have always coexisted with the First Amendment, without constitutional concern, even though trademark protection necessarily requires content-based distinctions. Due to the long history of content-based restrictions on trademark rights, the Court found that the sort of heightened scrutiny ordinarily applied to content-based regulations need not always apply in this context.

Ultimately, the Court concluded that because the names clause fits within the tradition of restricting the trademarking of names, it is constitutional. The Court expressly declined to set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional, though, and commented that such a restriction lacking a firm grounding in traditional trademark law may require a different approach.

Justice Thomas delivered the opinion of the Court, in which Justices Alito and Gorsuch joined in full and in which the Chief Justice, Justice Kavanaugh, and Justice Barrett joined in part.

Justice Kavanaugh filed an opinion concurring in part in which the Chief Justice joined.

Justice Barrett filed an opinion concurring in part in which Justices Sotomayor, Kagan, and Jackson joined in part.

Justice Sotomayor filed an opinion concurring in the judgment in which Justices Kagan and Jackson joined.