The US Supreme Court held on 13 June 2024 that the Lanham Act names clause does not violate the First Amendment. In Vidal v. Elster, the Court reversed the Federal Circuit and upheld the US Patent and Trademark Office's refusal to register the mark Trump too small for use on shirts and hats.
The names clause, in 15 U.S.C. section 1052(c), prohibits registration of a mark that consists of or comprises a name identifying a particular living individual except with that person's written consent. A trademark examiner refused registration on that basis, and the Trademark Trial and Appeal Board affirmed, rejecting the applicant's argument that the clause infringed his free speech rights.
The Federal Circuit reversed in February 2022, holding that applying the clause to this mark was unconstitutional.
What the Supreme Court decided
All nine Justices agreed with the result, but on different reasoning. The opinion, written by Justice Thomas, found that the names clause does not discriminate on the basis of viewpoint but is content based, because it turns on whether a mark contains a person's name. That distinguished Matal v. Tam and Iancu v. Brunetti, in which the Court had held that trademark restrictions discriminating on the basis of viewpoint violate the First Amendment.
The Court then held that a content-based but viewpoint-neutral restriction on trademark registration need not always face heightened scrutiny, because trademark law has always turned on a mark's content and has coexisted with the First Amendment since the founding. It found the history and tradition of restricting trademarks containing names sufficient to uphold the clause, which protects a person's ownership of their own name and the reputation and goodwill attached to it.
The Court stressed that its decision is narrow. It does not set out a comprehensive framework for all content-based, viewpoint-neutral trademark restrictions, and holds only that history and tradition support this particular restriction.
What it means for brand owners
Applicants seeking to register marks that include a living person's name still need that person's written consent, whether the mark praises or criticises them. Merchandise using political and celebrity names can still be sold, but without the benefits of federal registration. The case record is available on the Supreme Court docket, and the Lanham Act names clause remains part of the US registration system.
