TRADEMARK BLOG POST: Vidal v. Elster, No. 22-704 (U.S. June 13, 2024)

Many people utilize their personal name as part of their business name. In general, you have a right to do that and to incorporate your name into your company trademark. The U.S. Supreme Court recently decided that the government’s decision to stop other people from registering a trademark with another living person’s name in it without that person’s consent under the “names clause” of the Lanham Act (15 U.S.C. § 1052(c) (which bars registration of a mark that ”consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent . . .”) is consistent with the First Amendment. It’s not an abridgement of free speech for the government to refuse to register such trademarks, even if the name at issue refers to a former President of the United States.

Steve Elster wanted to register the phrase trademark the phrase TRUMP TOO SMALL as a trademark to be used on shirts and hats. In the absence of actual consent from the former President, the U.S. Patent and Trademark Office (USPTO) said no. The names clause requires consent of any living person whose name appears within the trademark. Mr. Elster argued that the USPTO’s decision violated the First Amendment freedom of speech.

The high court first explained how First Amendment law distinguishes between “viewpoint-based” regulations and “content-based” regulations. The line between the two types is whether the regulation or law targets the subject matter of the speech or the viewpoint on that subject matter. In this case, the majority decided that the names clause was viewpoint neutral: whether Mr. Elster wanted to register the trademark TRUMP TOO SMALL, TRUMP TOO LARGE, or TRUMP JUST RIGHT, the USPTO’s answer would be the same: no registration. Instead, the names clause is a viewpoint neutral but content-based regulation (the content being “living person’s names”). Therefore, although content-based regulations are “presumptively unconstitutional as a general matter,” the justices determined that content-based but viewpoint-neutral trademark restrictions were not so problematic.

The majority opinion looked at the “history and tradition” of name-related trademark restrictions, finding that trademark rights have always co-existed with the First Amendment even though trademark protection necessarily required content-based distinctions. In other words, some content can be protected by trademark law and some cannot. Even the most core trademark regulation – that a person cannot register a trademark that is confusingly similar to another trademark – is content-based. Name-based trademark restrictions, like those at issue in Vidal, have a long history. For example, “a person has ownership over his own name” and people are generally entitled to use their own name for their business. Historically, under the common law, one could not trademark their own name by itself but could use their name within a trademark. However, one generally could not stop someone else who shares the same name from using that name within their own trademark. Someone else named Trump perhaps could register TRUMP TOO SMALL as a trademark.

Due to the “longstanding coexistence of trademark regulation with the First Amendment,” the Court simply looked at the history of name restrictions to determine that they serve important and established purposes. Historically, selling a product under the name of another person could be actionable fraud. One should not be able to trade off of the goodwill and reputation built up by someone else. Restrictions on name-based trademarks also serve the important function of source identification. Trademarks help to make sure that consumers do not make a mistake about who is responsible for a product. Accordingly, the Court found no reason to disturb the tradition of allowing name-based trademark restrictions.

The Court specifically stated that its decision was narrow: it did not set forth a comprehensive framework for judging whether all content-based but viewpoint neutral trademark restrictions are constitutional. It only decided that the names clause at issue does not violate the First Amendment based on “history and tradition.” Other Justices, including Justices Barrett, Kagan, Sotomayor, and Jackson, wrote concurring opinions. Rather than looking at the “history and tradition” to make this decision, these Justices would have simply applied established First Amendment law. However, no matter how they reached the conclusion, all nine Justices agree: the names clause is constitutional. If you want to include a name of a living person in your trademark, you need consent.