Supreme Court Upholds Lanham Act Restriction

In Vidal v. Elster, the Supreme Court upheld the constitutionality of the Lanham Act “names clause” which bars registration of trademarks that consist of or comprise a name identifying a particular living individual without their consent. Dennis Crouch, writing in PatentlyO, calls it an important trademark law and free speech decision. 

Justice Thomas, writing for the Court, differentiated this case from previous decisions where the Court struck down other Lanham Act provisions for viewpoint discrimination. The Court held that the names clause is viewpoint-neutral, despite being content-based, as it applies irrespective of the message conveyed.

The case involved Steve Elster’s attempt to register the trademark “TRUMP TOO SMALL” for merchandise. The USPTO denied the registration under the names clause, as the mark referenced Donald Trump without his consent.

The United States Patent and Trademark Office (USPTO) refused based on the names clause of the Lanham Act, which prohibits trademarks that use the name of a living individual without their consent.

The decision ruled that the names clause is viewpoint-neutral and consistent with the history and tradition of trademark law, despite being content-based. However, only Justices Alito and Gorsuch joined all parts of Justice Thomas’s opinion for the court.

Justice Kavanaugh and Chief Justice Roberts concurred but suggested a viewpoint-neutral provision could be constitutional even without historical support. Justice Barrett concurred, joined by Justices Kagan and Sotomayor, arguing for the constitutionality because it serves the trademark’s source-identifying function, not based on history and tradition alone.

Crouch is in partial disagreement as well, but he says that the case is an indication that the Court is unlikely to further dismantle trademark law based upon free-speech grounds. It also suggests that provisions that have historically been part of trademark law, even if they are content-based, are valid if they are viewpoint-neutral.

Nevertheless, the many partial concurrences leave some uncertainty about the proper framework for evaluating provisions without much history.