[co-author: Jamil AbuRoomi]

Last week, the U.S. Supreme Court decided in Vidal v. Ester, 602 U.S. ___ (2024) that the federal prohibition on registering trademarks that identify a living individual without their consent does not violate the First Amendment right to free expression. Although the Justices were unanimous in the ultimate result, they disagreed dramatically as to why, ultimately providing little guidance for future cases.

At issue was Elster’s effort in 2018 to register the trademark “Trump Too Small,” accompanied by an illustrated hand, sold on a T-shirt as political commentary about former President Donald Trump.

The U.S. Patent and Trademark Office (PTO) denied his request for registration, but the Federal Circuit Court of Appeals disagreed, finding that the prohibition on registering trademarks with reference to a living individual violates the First Amendment.

Reversing, the Supreme Court explained that that the federal prohibition was a content-based, viewpoint-neutral restriction on speech—meaning it treats trademarks differently based on the idea they convey, but not based on their opinion of a particular idea—and held that this prohibition does not violate the First Amendment.

Writing for five justices, Justice Thomas looked to the Nation’s “history and tradition,” tracing a long tradition of trademark restrictions against obtaining trademarks of other people’s names, starting with English common law and carrying over to the present. The tradition of restricting the trademarking of names has coexisted with and, therefore, does not violate the First Amendment.

There were three separate concurring opinions, each with increasing criticism of the “history and tradition” approach. Justice Kavanaugh and Chief Justice Roberts agreed with the majority approach, but explained that there might be a viewpoint-neutral, content-based trademark restriction that is constitutional “even absent such historical pedigree.”

Justice Barrett (joined in large part by Justices Kagan, Sotomayor, and Jackson) criticized Justice Thomas’s approach as “wrong twice over.” Barrett argued that the majority looked to mismatched historical analogues, but also questioned whether “hunting for historical forebears” should be the approach at all. Barrett would instead adopt a case by case approach that would uphold trademark restrictions that “are reasonable in light of the trademark system’s purpose of facilitating source identification.”

And Justice Sotomayor (joined by Justices Kagan and Jackson) was the most critical of the majority approach, urging the Court to follow the Court’s prior precedent that upheld trademark restrictions that “reasonably serve [trademark law’s] purpose of identifying and distinguishing goods for the public.” The “history and tradition” approach is, according to Sotomayor, “the equivalent of entering a crowded cocktail party and looking over everyone’s heads to find your friends.” And, to make matters worse, Sotomayor complained, “the five-Justice majority that undertakes this tradition-as-dispositive inquiry found its friends in a crowded party to which it was not invited. That majority has drawn conclusive inferences from its historical evidence, all without any guidance from the litigants or the court below.”

Vidal foreshadows that Supreme Court’s surprising unanimity so far this term – see, for instance, Kimberly Strawbridge Robinson, Supreme Court Achieves Historic Unanimity but Tougher Cases Loom, Bloomberg Law (May 8, 2024) – could be an anomaly. For those seeking certainty in IP law, Vidal gives little by way of guidance on how other IP laws will be interpreted down the road.