Referred to as the “names clause”, the Lanham Act prohibits registration of a mark that consists of or comprises a name that identifies a particular living individual without written consent.¹ This includes full names, surnames, shortened names, and nicknames.

Steve Elster sought to register the mark “Trump Too Small” with an illustration of a hand gesture in connection with shirts and hats.² The proposed mark is a reference to an exchange between Donald Trump and Marco Rubio that occurred during the 2016 Presidential primary debate.³

The United States Patent and Trademark Office refused to register the mark on the grounds that it violates the Lanham Act’s names clause.⁴ After being affirmed by the Trademark Trial and Appeal Board on the same grounds, the applicant appealed to the Federal Circuit.⁵ The Federal Circuit reversed, holding that the names clause violated the First Amendment.⁶ Accordingly, the Supreme Court granted certiorari to determine the constitutionality of the names clause.⁷

In determining whether a statute violates freedom of speech under the First Amendment, the Court distinguishes between content-based and content-neutral regulations on speech.⁸ A content-based regulation restricts speech based on a specific subject matter or topic and is presumptively unconstitutional.⁹ A content-based regulation can only stand if the government proves that the regulation is “narrowly tailored to serve compelling state interests.”¹⁰

Likewise, viewpoint discrimination – an “egregious form of content discrimination” – targets “particular views taken by speakers on a subject” and must face heightened scrutiny in determining whether the regulation is constitutional.¹¹

Elster argued that, in practice, the names clause constituted viewpoint discrimination as it is easier to gain consent for a flattering trademark rather than a critical one.¹² Rejecting this argument, the Supreme Court noted that precedent has allowed a law to discriminate based on viewpoint in its practical operation.¹³ Most importantly, the Court held that the names clause “does not facially discriminate against any viewpoint” as it is applicable whether the mark is flattering, unflattering or neutral in its reference to the living individual.¹⁴

While the names clause is not viewpoint based, the Court did hold it is content based as “[t]he names clause turns on the content of the proposed trademark – whether it contains a person’s name.”¹⁵ After considering the historic coexistence of inherently content-based trademark laws and the First Amendment, the Court held that the “longstanding, harmonious relationship suggests that heightened scrutiny need not always apply in this unique context.”¹⁶ Accordingly, the Supreme Court concluded “that the names clause – a content based, but viewpoint-neutral, trademark restriction – is compatible with the First Amendment.”¹⁷

The Court further opined on the longstanding history of protecting ownership over one’s name and the right to benefit from its commercial use.¹⁸ Such language could foreshadow future decisions regarding the constitutionality of right of publicity claims.

It is important to note that in reaching its decision, the majority was careful to say that this decision does not “set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional.”¹⁹ Rather, the specific history and tradition between the inherently content-based trademark laws and the First Amendment informed the Court’s decision in this particular instance.

This case is the third time in recent history that the Supreme Court has weighed whether certain restrictions in the Lanham Act violated the First Amendment. In Matal v. Tam, 582 U.S. 218 (2017), the Court invalidated the provision that forbade registration of disparaging marks, and in Iancu v. Brunetti, 588 U.S. 388 (2019), the Court invalidated the provision that forbade registration of immoral or scandalous marks. Notable differences between these prior cases which struck down the provisions as unconstitutional, and this case which did not, is the Court’s finding that the prior considered provisions were viewpoint-based.

The Supreme Court’s decision was unanimous as to the constitutionality of the names clause, but included three concurrences with each explaining a different path the justices took to get there.

In Justice Kavanaugh’s concurrence, he likewise agreed with the majority that the long history of restricting the use of another’s name in a trademark supported the constitutionality of the names clause.²⁰

Justice Barret’s concurrence (joined by Justices Kagan, Sotomayor and Jackson (in part)), rejected the majority’s reliance on the historical coexistence between trademark law and the First Amendment. Further, Justice Barrett stated she would have adopted a standard grounded in Court precedent “that reflects the relationship between content-based trademark registration restrictions and free speech.”²¹

Finally, Justice Sotomayor’s concurrence (joined by Justices Kagan and Jackson) agreed with Justice Barrett that the majority’s reliance on historical evidence was not necessary to find the names clause constitutional.²² Justice Sotomayor proposed a two step framework to determine the constitutionality of a trademark provision. First, determine if the regulation is viewpoint based, if it is then it is presumptively unconstitutional and heighted scrutiny applies.²³ If it is viewpoint neutral, “the trademark registration bar need only be reasonable” in that it “serve[s] its purpose of identifying and distinguishing goods for the public.”²⁴

The heavy reliance by the majority on the historical context mixed with the several varying concurring opinions, leaves some questions for trademark practitioners about the relationship between the First Amendment and other content-based, viewpoint neutral trademark laws. It is also unclear if this decision will be a springboard for future decisions as to right of publicity laws.