Decision Alert: Supreme Court Unanimously Upholds Patent and Trademark Office’s Refusal to Register “TRUMP TOO SMALL” Trademark

 

On June 13, 2024, in Vidal v. Elster, the Supreme Court unanimously held that the Lanham Act’s restriction of trademarks based on a living person’s name does not violate the First Amendment. The case marks the first time the Court has held that a solely content-based restriction on trademark registration need not be evaluated under heightened scrutiny. Even though the decision was unanimous, the justices’ reasoning was not.

As previously summarized in Dykema’s December 2023 edition, Elster sought federal registration for the trademark “TRUMP TOO SMALL” to use on shirts. The USPTO declined to register the proposed mark, reasoning that the public would likely perceive it as a reference to former President Donald Trump. According to the USPTO, such a mark would violate the Lanham Act’s “names clause,” which prohibits issuing marks using a living individual’s name without the individual’s consent. Arguing that the names clause was unconstitutional as applied to his trademark, Elster appealed, and the Federal Circuit reversed the USPTO’s decision. The Court granted certiorari to consider whether the names clause impermissibly restricts speech in violation of the First Amendment.

Justice Thomas delivered the Court’s opinion. Justice Thomas first concluded the names clause is viewpoint neutral (both on its face and as applied) because it does not support or promote one ideology over another. He observed that the USPTO consistently rejected proposed marks that used a name without permission, not because they expressed a particular viewpoint. For instance, it refused to register “Welcome President Biden,” “I Stand With Trump,” and “Obama Pajama.” Addressing what the Court considered to be a matter of first impression, “the constitutionality of a content-based—but viewpoint-neutral—trademark restriction,” Justice Thomas ultimately concluded that the names clause passes constitutional muster because trademarks have deep roots in our nation’s history and necessarily involve some content-based distinctions. Relying on historical sources, Justice Thomas explained that the common law “[r]ecogniz[ed] a person’s ownership over his name,” but did not “afford[] protection to a person seeking a trademark of another living person’s name.” Accordingly, the names clause is permissible because it aligns with common-law tradition regarding the trademarking of names. Chief Justice Roberts and Justices Alito, Gorsuch and Kavanaugh joined this portion of the opinion, creating a controlling majority decision regarding (a) the constitutionality of the names clause and (b) the use of history and tradition to determine whether its application in this case passed constitutional muster.

The majority splintered, however, over the scope of Justice Thomas’s history-based rationale. Justice Kavanaugh penned a concurrence, joined by the Chief Justice, to express that “a viewpoint neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree.” Justice Barrett, agreeing with the majority’s baseline holding only, wrote a concurring opinion, joined in part by Justices Sotomayor, Kagan, and Jackson, disavowing the majority’s historical analysis as an appropriate rubric for assessing the constitutionality of restrictions like the names clause in this case. Instead, Justice Barrett argued that “[s]o long as content-based registration restrictions reasonably relate to the purposes of the trademark system, they are constitutional.”

Justice Sotomayor, joined by Justices Kagan and Jackson, also filed a concurring opinion agreeing that the names clause did not violate the First Amendment, but criticizing other aspects of the majority’s decision. According to Justice Sotomayor, the majority should have looked to “trademark law and settled First Amendment precedent” instead of venturing into “uncharted territory” of the “history and tradition” of a viewpoint neutral, content based condition.

Takeaways:

• The USPTO may continue to deny trademark applications under the Lanham Act’s names clause.
• Although unanimous as to the holding that the names clause is constitutional, six of the nine Justices either called into question or rejected history and tradition as a limiting analytical principle and indicated that they may consider a viewpoint neutral, content-based trademark restriction constitutional on other grounds in a future case, making it important to assert and preserve all available arguments for appeal.
• Although the case involved an as-applied statutory challenge, the Court’s decision does not foreclose future as-applied challenges based on the USPTO’s application of the names clause in rejecting a trademark registration where, for example, it can be sufficiently demonstrated that the USPTO denied registration under the names clause based on the applicant’s viewpoint.

For more information, please contact Chantel Febus, James Azadian, Cory Webster, Christopher Sakauye, Monika Harris, Puja Valera, or A. Joseph Duffy, IV.