It's always a fun day when the United States Supreme Court decides a case related to trademarks! It’s even better when it intersects with the First Amendment!
Steve Elster filed a trademark application for TRUMP TOO SMALL. The USPTO refused registration under what’s known as the “names clause” of the Lanham Act (15 U. S. C. §1052(c)), which says a name, portrait, or signature cannot be registered as a trademark without the person’s consent. Here, Donald Trump’s name was used without his consent.
The Federal Circuit held that this violated the First Amendment when it applies to commentary on public figures such as politicians.
The Supreme Court unanimously disagreed and upheld the names clause and upheld the USPTO’s refusal to register TRUMP TOO SMALL without Donald Trump's consent.
Justice Thomas wrote the unanimous opinion (in judgment, not reasoning) for the Court. The names clause is a content-based restriction because it applies to trademarks when names are used but does not apply to trademarks that do not use names. However, the Court rejected Mr. Elster's argument that the names clause was viewpoint discrimination because it is easier to get consent from a person who is being praised than one who is being mocked. The Court said the names clause is viewpoint neutral because it does not discriminate based on a specific viewpoint. In the context of trademark law, a content-based but viewpoint-neutral law does not require heightened scrutiny, but that doesn’t mean all such trademark laws are constitutional.
There is a nice outline of trademark law history in the opinion. The first American decision related to trademarks was one that held someone who sold inferior products under the same name as another (“Thomsonian Medicines”) could be liable for fraud. Although there were restrictions on preventing another with the same surname from using that surname, there is no historical evidence a person could seek protection of another living person’s name.
Although all nine Justices agreed with the outcome, the Justices differed on reasoning. Justice Kavanaugh thought that viewpoint-neutral, content-based trademark laws may still be constitutional even without the historical lesson.
Justice Barrett objected to the use of only history and tradition as reasoning, and would rather the Court adopt a standard. Justice Barrett proposed a standard that says the restriction does not run afoul of free speech if it relates to preserving the goodwill of the owner of the trademark and prevents consumer confusion. The names clause could be upheld under his test, she wrote, because it would be unfair to capitalize on the goodwill of another without their consent.
Justice Sotomayor would prefer to rely on First Amendment precedent instead of history and tradition. If the law is viewpoint based, apply heightened scrutiny. If it’s viewpoint neutral, the law need only be reasonable to serve the trademark purpose of being a source-identifier. She noted that Mr. Elster was not prohibited from selling the shirts; rather, he was prohibited from asserting exclusive rights to prevent others from selling goods or services in someone else’s name without their consent.
The Court left analysis on other provisions of the Lanham Act open to future cases... what provision of the Lanham Act do you think will be challenged next?
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