Caseflicks

Supreme Court of the United States • 2024

Vidal v. Elster

602 U.S. 286

Full access

Unlock the video and quiz

The written brief is free to read below. Subscribe to watch the video explainer and take the quiz.

Create an account Log in

Takeaway

In short, the First Amendment does not require federal registration of a trademark that uses a living person’s name without consent; the Court left the test for other viewpoint-neutral registration rules open.

Background

Steve Elster sought to register “Trump too small” as a trademark for shirts and hats. A Patent and Trademark Office examiner refused registration under the Lanham Act’s names clause, which bars registration of a mark identifying a particular living person without that person’s written consent. The Trademark Trial and Appeal Board affirmed.

The Federal Circuit reversed. It held that the names clause burdened speech based on content and failed even intermediate First Amendment scrutiny. The Supreme Court granted review.

Issues

Issue #1

Whether the Lanham Act’s refusal to register a trademark containing a living person’s name without consent violates the First Amendment.

Holding

No. The names clause is a constitutional restriction on federal trademark registration.

Reasoning

The names clause is content based because registration turns on whether a mark contains a person’s name. But it is viewpoint neutral: it applies whether the mark praises, criticizes, or says nothing about that person. That distinguishes it from the viewpoint-based trademark restrictions the Court previously struck down.

Trademark law has always made distinctions based on a mark’s content to identify the source of goods and prevent confusion. Given that longstanding relationship with the First Amendment, a viewpoint-neutral trademark registration rule does not automatically receive heightened scrutiny merely because it is content based.

Restrictions on trademarking names have deep roots in the principle that people should remain free to use their own names and protect the goodwill attached to them. The names clause fits that tradition by preventing someone from registering another living person’s name without consent.

The holding is narrow. Elster may still use the phrase without federal registration, and the Court expressed no view on other grounds for refusing his application. Nor did it establish a test for every viewpoint-neutral trademark restriction or require an equivalent historical tradition to uphold each one.

Concurrences

Justice Kavanaugh

Reasoning

Justice Kavanaugh agreed that the names clause is constitutional, particularly given the history of restricting trademarks that use another person’s name. He emphasized that a viewpoint-neutral restriction might also be constitutional without a comparable history, leaving that question for another case.

Justice Barrett

Reasoning

Justice Barrett would ask whether a content-based registration rule reasonably serves trademark law’s purpose of identifying a product’s source. She found the names clause reasonable on that basis but disputed that the historical record alone establishes its constitutionality.

Justice Sotomayor

Reasoning

Justice Sotomayor would uphold the clause as a reasonable, viewpoint-neutral condition on the additional benefits of federal registration. She favored that First Amendment framework over treating a contested historical tradition as dispositive.