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Vidal v. Elster, 2024 U.S. LEXIS 2605 (S. Ct. June 13, 2024) (Thomas, J.)

Vidal vs. Elster, Supreme Court of the United States, decided June 13, 2024.

Justice Thomas announced judgment of the Court and delivered the opinion of the Court with respect to Parts I, II, and IV, and an opinion with respect to Part III, in which Justice Alito and Justice Gorsuch join.

Steve Elster sought to register a trademark “Trump too small.” But, the Patent and Trademark Office (PTO) refused to register the mark because the Lanham Act prohibits registration of a trademark that “[c]onsists of or comprises a name….identifying a particular living individual except by his written consent.” 60 Stat. 428, 15 U.S.C. §1052(c). Elster contends that this prohibition violates his First Amendment right to free speech. We hold that it does not.

Only marks that meet certain criteria are federally registerable. Among other criteria, the First Amendment–contains what we will call the “names clause” – a prohibition on the registration of a mark that “[c]onsists of or comprises a name….identifying a particular living individual except by his written consent.” §1052(c). The names clause excludes from registration “not only full names but also surnames, shortened names, and nicknames, so long as the name does in fact identify a particular living individual.” McCarthy, Trademarks and Unfair Competition §13:37, p. 31 (5th ed. 2024) (McCarthy).

Steve Elster sought to register the trademark “Trump too small,” accompanied by an illustration of a hand gesture, to use on shirts and hats. The mark draws on an exchange between then-candidate Donald Trump and Senator Mark Rubio during a 2016 Presidential primary debate.

The PTO examiner refused registration under the names clause because the mark used President Trump’s name without his consent. The Trademark Trial and Appeal Board affirmed, and it also rejected Elster’s argument that the names clause violates his First Amendment right to free speech. The Federal Circuit reversed, holding that the names clause violated the First Amendment. In Re: Elster, 26 F.4th 1328 (CA Fed. 2022). The court first concluded that the names clause is a viewpoint-neutral, content-based restriction on speech subject to at least intermediate scrutiny. See id., at 1331, 1333-1334. It next concluded that the Government could not satisfy even intermediate scrutiny because the names clause does not advance any substantial governmental interest. See id., at 1339.

We granted certiorari to resolve whether the Lanham Act’s name clause violates the First Amendment. 598 U.S. ___, 143 S. Ct. 2579, L. Ed. 2d 1192 (2023).

Because we must now consider for the first time the constitutionality of a content-based – but viewpoint-neutral – trademark restriction, we begin by addressing how the nature of trademark law informs the applicable constitutional scrutiny. Although a content-based regulation of speech is presumptively unconstitutional as a general matter, we have not decided whether heightened scrutiny extends to a viewpoint-neutral trademark restriction. Several features of trademark counsel against a per se rule of applying heightened scrutiny to viewpoint-neutral, but content-based trademark regulations.

Because of the uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment, we need not evaluate a solely content-based restriction on trademark registration under heightened scrutiny. See R.A.V., 505 U.S. 387, 112 S. Ct. 2538, 120 L. Ed. 2d 305 (“Evan the prohibition against content discrimination that we assert the First Amendment requires is not absolute”); Jack Daniel’s, 599 U.S., at 159, 143 S. Ct. 1578, 216 L. Ed. 2d 161 (explaining that, in some circumstances, “trademark law [can] prevai[l] over the First Amendment” (internal quotation marks omitted)); post, at 6 (opinion of Sotomayor, J.); post, at 6-7 (Opinion of Barrett, J.).

We conclude that a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition. Through the particulars of the doctrine have shifted over the time, the consistent through line is that a person generally had a claim only to his own name. The names clause reflects this common-law tradition by prohibiting a person from obtaining a trademark of another living person’s name without consent, thereby protecting the other’s reputation and goodwill.

Justice Barrett echoed by Justice Sotomayor would import the test we have used for a “limited public forum.” “We see no need to adopt a potentially fraught analogy to resolve the names clause’s constitutionality.”

Our decision today is narrow. We do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor do we suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. We hold only that history and tradition establish that the particular restriction before us, the names clause in §1052(c), does not violate the First Amendment. Although an occasion can arise when history and tradition cannot alone answer whether a trademark restriction violates the First Amendment, whether a “viewpoint-neutral, content-based trademark restriction” is constitutional without “such a historical pedigree.” Post, at 1 (opinion of Kavanaugh, J.). The judgment of the Court of Appeals is reversed.