Supreme Court: Ban on Registering Someone Else’s Name as a Trademark Withstands the First Amendment

In Vidal v. Elster, Case No. 22-704 (slip op.) (June 13, 2024), the U.S. Supreme Court issued its third decision in the last seven years addressing whether the Lanham Act (the federal trademark law) violates the First Amendment. Previously the Court found that the Act’s restriction on disparaging trademarks and immoral or scandalous trademarks violated the First Amendment. Here, by contrast, the Court unanimously held that the Act’s restriction on trademarks that are the names of living persons without their consent (the “Names Clause”) does not violate the First Amendment. 

Businessman Steve Elster sought to register the mark “TRUMP TOO SMALL” accompanied by the illustration of a hand gesture for use on certain apparel, like shirts and hats. The mark and design were meant to evoke the widely publicized exchange between presidential candidates Donald Trump and Senator Marco Rubio during a 2016 presidential primary debate. The United States Patent and Trademark Office (PTO) refused registration of Elster’s application under 15 U.S.C. § 1052(c), which prohibits registration of a trademark that “consists of or comprises a name … identifying a particular living individual except by his written consent.” Although the Trademark Trial and Appeal Board affirmed the refusal, the Federal Circuit reversed the rejection of Elster’s application to register the mark, holding that the restriction violated the First Amendment’s prohibition against laws that restrict the exercise of free speech. 

The Federal Circuit reasoned that the restriction against the trademark registration of a living person’s name without their consent is a viewpoint-neutral, content-based restriction on speech that was subject to at least an intermediate level of Constitutional scrutiny. That being the case, the Federal Circuit concluded that the PTO could not satisfy that intermediate level of scrutiny because the Names Clause does not advance any substantial governmental interest and thus violated the First Amendment. 

While the Court agreed with the Federal Circuit that the Names Clause was both viewpoint-neutral and content-based, it disagreed that the restriction was not compatible with the freedom of speech protections afforded by the First Amendment. Justice Thomas’s majority opinion detailed the historical development and tradition of trademark law before reaching the conclusion that the “longstanding coexistence of trademark regulation with the First Amendment” was sufficient basis to find that the Names Clause, in particular, is also compatible with the First Amendment.

Indeed, the Court noted, there are other content based restrictions in the Lanham Act, such as the restriction against registering trademarks that are geographically descriptive, or that are confusing with other trademarks. A restriction on registering someone else’s name without their consent also makes good sense, especially in view of the longstanding precedent protecting a person’s right to profit off of their own name. Those rights, the Court explained, dated back to English common law, where it was long held that using the name of another person without consent constituted fraud. Justice Thomas observed that the first reported decision that could be considered a trademark related dispute involved the use of “THOMSONIAN MEDICINES” by a druggist named Thomson and another non-Thomson druggist. He detailed the evolution of trademark rights in a personal name, and the case law holding that trademark rights could not be claimed in another’s name. As Justice Sotomayor noted in her concurrence, goods sold by someone using plays on the names of Derek Jeter and Jorge Posada, in the case of the Names Clause as it exists today, makes reasonable sense because Jeter and Posada—and their fans—would not want there to be confusion as to the source of the goods sold in connection with their names.

Justices Kavanaugh, Barrett and Sotomayor each wrote separate concurring opinions making different historical analogies or applying different methodologies to the analysis of the intersection where trademark law meets hallowed First Amendment protection. However, as Justice Thomas noted at the conclusion of his opinion, “no matter the approach taken, we all agree that the names clause does not violate the First Amendment.”

Ultimately, we do not expect that this decision will change how individual names are used in the marketplace or are sought to be registered with the PTO. Although some of the dicta suggests more far-reaching principles – such as Justice Barrett’s proposed standard for evaluating trademark registration criteria at a high level – the majority opinion is restricted to the Names Clause and nothing further. As such, a trademark application proposing a name that comprises or consists of a living person’s name without their consent cannot be, and still will not be, registered with the PTO. 

On the other hand, the existence of the Names Clause does not mean that a mark with someone else’s name cannot be used in the marketplace. As Justice Sotomayor observed, Elster could have produced his shirts or hats with the slogan “TRUMP TOO SMALL” and simply offered them under “ELSTER APPAREL” or some other company name as an indicator of the source of his goods. The Names Clause prohibition only pertains to registration and therefore does not restrict Elster’s (or anyone else’s) ability to freely use the mark and express their views on Trump or anyone else’s name. 

While the Justices’ broader discussions regarding methodology are interesting and may be harbingers of the methodology for other forthcoming decisions, this decision will have little impact on the current state of personal names as trademarks. The Names Clause remains a reasonable and sensible restriction grounded, at its core, in the basic principle that an individual should have control over their own name as a source identifier.

Brown Rudnick has an experienced group of trademark attorneys and staff who can assist with assessment, prosecution, enforcement, and counseling. We encourage you to reach out to us with questions about registration criteria and how to best protect your valuable intellectual property.