As expected, based on the tenor of the Justices’ questions during oral argument, the U.S. Supreme Court has ruled against a trademark applicant seeking to register a mark commenting on former President Donald Trump. The decision represents something of a shift from prior decisions striking down portions of the federal Lanham Act on First Amendment grounds.

As we wrote earlier this year, the Supreme Court granted cert to review Vidal v. Elster, which involved the U.S. Patent and Trademark Office’s (USPTO) refusal of Steve Elster’s application to register the trademark TRUMP TOO SMALL for t-shirts. In refusing registration, the USPTO cited Section 2(c) of the Lanham Act, which prohibits the registration of marks that consist of or comprise a name, portrait, or signature identifying a particular living individual except when the individual has provided his or her written consent. The USPTO found that Elster’s trademark clearly identified former President Donald Trump, and so refused registration under Section 2(c), as Trump had not provided consent. Elster claimed, however, that this section of the Lanham Act is unconstitutional because it violates his First Amendment right to free speech, i.e., his right to criticize a political figure.

On appeal, the Federal Circuit found Elster’s argument persuasive, and held that the names clause violated the First Amendment. The Supreme Court, however, disagreed with Elster and the Federal Circuit, ruling 9-0 in favor of the USPTO in affirming the agency’s refusal of Elster’s trademark application. Delivering the Court’s opinion, Justice Clarence Thomas explained: “The Lanham Act’s names clause has deep roots in our legal tradition. Our courts have long recognized that trademarks containing names may be restricted. And, these name restrictions served established principles. This history and tradition is sufficient to conclude that the names clause—a content-based, but viewpoint-neutral, trademark restriction—is compatible with the First Amendment.”

Justice Thomas distinguished this case from other recent cases pitting the Lanham Act against the First Amendment. To wit, the high court previously struck down provisions of the Lanham Act prohibiting registration of marks that are disparaging (Matal v. Tam) and marks that are immoral or scandalous (Iancu v. Brunetti). In each case, the Court held that the relevant provisions of the Lanham Act were not viewpoint neutral, and therefore violated the First Amendment.  In the instant case, however, the Court found that the prohibition in question (trademarks identifying a particular individual) is viewpoint neutral: “The names clause does not facially discriminate against any viewpoint. No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent.” Accordingly, the Court held that Section 2(c) of the Lanham Act does not violate the First Amendment.