SCOTUS: Trademark Content Restrictions Are Not Getting Smaller As Supreme Court Holds TRUMP TOO SMALL Cannot Be Registered

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP


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The Supreme Court has recently made significant efforts to clarify how the Lanham Act and the First Amendment interact in the context of trademark law.
United States Intellectual Property
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The Supreme Court has recently made significant efforts to clarify how the Lanham Act and the First Amendment interact in the context of trademark law. For example, in 2017, the Court in Matal v. Tam, 582 U.S. 218 (2017), deemed the Lanham Act's bar on disparaging trademarks unconstitutional because it violated the First Amendment. In 2019, the Court in Iancu v. Brunetti, 588 U.S. 388 (2019), similarly found the bar on trademarks containing immoral or scandalous matter unconstitutional, also because it violated the First Amendment. In both of those cases, the Court was presented with provisions of the Lanham Act that constituted "viewpoint based" restrictions on speech because they only prohibited the registration of trademarks reflecting a single viewpoint, namely, trademarks that give offense in Tam and trademarks containing immoral or scandalous matter in Brunetti.

Unlike those cases, Vidal v. Elster presented for the first time the task of determining the constitutionality of a viewpoint-neutral, but still content-based, provision of the Lanham Act. The "names clause" (Section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c)) prohibits registration of a mark that "[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent." All nine Justices agreed that the names clause, although a content-based restriction on speech, does not violate the First Amendment. But the Court was split as to why. The majority—in an opinion written by Justice Thomas, joined by Justices Alito, Gorsuch, Kavanaugh, and Chief Justice Roberts—reached their decision based on the history of how names were treated under trademark law. Justice Kavanaugh also wrote separately (joined by Chief Justice Roberts) to note that a viewpoint-neutral, content-based trademark restriction may be constitutional even absent a historical pedigree, but that question was reserved for future cases. Justice Barrett (joined by Justice Kagan and in part by Justices Sotomayor and Jackson) and Justice Sotomayor (joined by Justices Kagan and Jackson) wrote separately, rejecting that historical approach and urging tests based on analogous First Amendment precedent.

With this split in methodology, the Court's decision will likely provide little practical guidance on the constitutionality of other viewpoint-neutral but content-based trademark restrictions. Indeed, all the Justices agreed that this was a "narrow" decision limited to "the relatively simple case before [them]." Because the Court could not come to agreement on a generally applicable test for determining the constitutionality of viewpoint-neutral but content-based provisions of the Lanham Act, that question is reserved for future cases involving provisions that do not have the same historical backdrop as the names clause.


In 2018, Steve Elster filed a federal trademark application for the mark TRUMP TOO SMALL for use on shirts and hats. Elster purportedly chose this trademark to "invok[e] a memorable exchange between President Donald Trump and Senator Marco Rubio from a 2016 presidential primary debate" and to "criticize" former President Trump. The application was refused based on the "names clause," which prohibits registration of a mark that uses a living person's name without their permission. Elster appealed this decision, arguing that the refusal violated his First Amendment rights because he was being prevented from registering a mark that criticized a public figure—in this case, a government official who also happened to be the President. As a result, Elster claimed, Section 2(c) was a viewpoint-based restriction on speech, like the provisions in Tam and Brunetti,that should be deemed unconstitutional. The Trademark Trial and Appeal Board ("TTAB") was not convinced; it affirmed the refusal and held that the "names clause" did not violate the First Amendment.

Elster appealed the TTAB's decision to the Federal Circuit, which disagreed with and reversed the TTAB, finding that Section 2(c) violated the First Amendment as a viewpoint-based restriction on speech. The Federal Circuit held that, irrespective of whether the appropriate standard of review is strict scrutiny or intermediate scrutiny, the government must demonstrate at least a substantial interest in restricting the "trademarked speech." The government argued that it had interests in protecting individuals' privacy and publicity rights, but the Federal Circuit was unmoved, finding that neither justified the government's restriction on speech.

Our earlier summary of the Federal Circuit's decision in this case can be found here.

The Supreme Court's Decision

While the Justices didn't agree on much in this decision, they did agree that the names clause was not unconstitutional. And although they did not agree on the reason why, they did agree on aon a few preliminary issues worth mentioning.

First, all nine Justices agreed that the names clause does not discriminate based on viewpoint, a type of restriction that targets not just the subject matter of the speech, "but particular views taken by speakers on the subject." Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829 (1995). The Court found that the names clause was not viewpoint-based because it prohibits the registration of any trademark containing a living person's name without authorization, irrespective of who the person is or whether the mark reflects positively or negatively on the individual. As Justice Thomas put it in the Court's majority opinion:

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 government is thus not singling out a trademark 'based on the specific motivating ideology or the opinion or perspective of the speaker.'

(Alteration in original; citation omitted). Rather, the Court found that the purpose of the names clause is to protect individuals' reputation and goodwill and to prevent others from "piggyback[ing] off the goodwill another entity has built in its name."

This finding is important because viewpoint discrimination is considered particularly egregious, presumptively unconstitutional, and always subject to heightened scrutiny. It is also important because it distinguished the names clause from the disparagement clause at issue in Tam and the immoral/scandalous clause at issue in Brunetti, both of which were deemed viewpoint-based restrictions that were unconstitutional. Thus, by finding the names clause viewpoint neutral, the Court entered uncharted territory.

Second, having agreed that the names clause was viewpoint neutral, all the Justices also agreed that it was still a content-based restriction on speech. This is significant because, while less concerning than viewpoint-based restrictions, viewpoint-neutral but content-based restrictions are still deemed presumptively unconstitutional. Despite that general rule, the Justices also agreed that content-based trademark restrictions—like the names clause—do not trigger the presumption of unconstitutionality. As Justice Thomas, writing for the majority, put it: "[H]istory demonstrates that restrictions on trademarks have always turned on a mark's content and have existed harmoniously alongside the First Amendment from the beginning. That relationship suggests that heightened scrutiny need not always apply in this unique context." Justices Barrett and Sotomayor, both writing separate concurrences, agreed on this point.

With those foundational principles settled, the Court turned to its reasoning for why the names clause did not violate the First Amendment, and that is where the agreement ended, and the Court was split.

Justice Thomas, writing for the majority, relied on notions of history and tradition in upholding the names clause. Citing to cases and commentary dating back to the mid-1800s, Justice Thomas described how the prohibition against registering another's name as a trademark has historically been grounded in the idea that a person should have exclusive ownership over their name. The Court noted that "the tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition" and was thus constitutional. Given this history, the Court found that there was no reason to adopt any specific test for how to deal with the constitutionality of future viewpoint-neutral but content-based trademark restrictions that do not have the same historical analogue as the names clause—a question that the Court acknowledges may eventually arise, and one the concurrences by Justices Barrett and Sotomayor seek to specifically address.

Finally, the Court was clear that it was not opining on "what may be required or sufficient in other cases" to justify the constitutionality of other viewpoint-neutral but content-based restrictions. In other words, the Court's opinion was limited to the facts of this case only.

The Concurrences

Justice Kavanaugh, joined by Chief Justice Roberts

Justice Kavanaugh, while joining all but one part of the Court's opinion, briefly concurred separately to state that he agreed the names clause was constitutional given the "long history of restricting the use of another's name in a trademark" and that the Court can address the "distinct question" of whether "viewpoint-neutral, content-based trademark restriction[s]" are constitutional when those questions arise in the future.

Justice Barrett, joined by Justice Kagan and joined in part by Justices Sotomayor and Jackson

As noted above, while all of the Justices concurred in the judgment, Justices Barrett and Sotomayor—each joined by Justices Kagan and Jackson—wrote separately to express their disagreement with the Court's "history and tradition" reasoning and to provide their own opinions on the methodology they believed the Court should have applied to evaluate the constitutionality of viewpoint-neutral, content-based trademark restrictions.

Justice Barrett stated that content-based restrictions should be permissible "as long as they are reasonable in light of the trademark system's purpose of facilitating source identification." She analogized to situations where the "government opens its property to speech for a particular purpose, creating a limited public form," whereby the government reserves the space for certain groups to discuss certain topics, i.e., a content-based decision. In these situations, courts evaluate such restrictions by asking "whether they are reasonable in light of the purpose which the forum at issue serves." Although noting that the trademark-registration system should not be "shoehorn[ed]" into the definition of a limited public forum, Justice Barrett found the analogy "apt," and felt the test could be equally applied to the evaluation of viewpoint-neutral, content-based trademark restrictions.

As for the Court's history analysis, Justice Barrett first explained that the history of the protection of names in the United States is not as clear-cut as the Court made it out to be. Irrespective, "[e]ven if the Court's evidence were rock solid" on the history, Justice Barrett still believed the Court's "historical analogue" was insufficient to resolve this case because, in her view, "tradition is not an end in itself." Plus, Justice Barrett said, the Court "merely delays the inevitable," as it will eventually "encounter a restriction without a historical analogue and be forced to articulate a test for analyzing it."

Justice Sotomayor, joined by Justices Kagan and Jackson

Justice Sotomayor similarly rejected the Court's historical approach. In doing so, she contended that the Court has "never applied this kind of history-and-tradition test to a free-speech challenge." She further contended that no litigant had argued this test before the Court, and no lower court ever evaluated it. She ultimately agreed with Justice Barrett that "there is no good reason" to apply this historical analysis at the expense of applying prior First Amendment precedent.

On that point, Justice Sotomayor posited the following test for dealing with trademark restrictions:

First ask whether the challenged provision targets particular views taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trademark system.

(Citation omitted). That is, the restriction must "reasonably serve its purpose of identifying and distinguishing goods for the public." If it is also viewpoint neutral and reasonable, then it does not violate the First Amendment. This test is similar to what Justice Barrett proposes, which Justice Sotomayor acknowledged.

Applying that test to the names clause, Justice Sotomayor believed it to be viewpoint neutral and reasonable. Specifically, she found that "[s]ource identification is . . . at the heart of what the names clause does," and the names clause thus serves the primary purpose of the trademark laws. Moreover, as for what was taken from Elster when his TRUMP TO SMALL application was denied, Justice Sotomayor noted that he was only deprived of a federal registration—a government benefit bestowing certain trademark-related advantages—but he was not denied the right to communicate his message or continue using his trademark. Thus, she found the government's decision to regulate the registration of name trademarks was not outweighed by any free-speech concerns.

While the concurrences differ, they do collectively agree that "[t]his court has never applied this kind of history-and-tradition test to a free-speech challenge" and criticize the majority for leaning so heavily into history and tradition in lieu of creating a test grounded in past precedent to guide future decisions.


Given the split on the Court's methodology and its decision not to create a test guiding future decisions on the constitutionality of other viewpoint-neutral, content-based trademark restrictions, it remains to be seen how those provisions will be handled down the road and whether courts will choose to apply the Court's historical analysis or one of the tests proposed by the concurrences.

This case is, however, an important reminder that "[t]rademark protection cannot exist without content discrimination," and the First Amendment must permit such content discrimination in order to have an effective trademark system. Importantly, the Court recognized the longstanding coexistence between the First Amendment and the trademark laws: "trademark rights have always coexisted with the First Amendment, and the inherently content-based nature of trademark law has never been a cause for constitutional concern."

So, while this case may not dramatically change the bounds of trademark law, it is a reminder to those seeking federal registration that there are permissible restrictions on registering a mark—even if those restrictions are content-based.

This case is Vidal v. Elster, 602 U.S. ___ (June 13, 2024).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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