When attempting to register a Trademark with the U.S. Patent and Trademark Office (“USPTO”), there are many legal requirements that must be satisfied for the registration to be successful. Some are very broad, and some are very narrow. As examples of broad requirements, the proposed trademark must actually function as a trademark, must be unique and must be used in interstate commerce. As an example of a narrow requirement, the Lanham Act governing trademarks and trademark registration provides that a proposed trademark cannot contain the name of a living person if that person has not given his or her consent to the use of their name. This is often called the Names Clause.

In a recent decision, Vidal v. Elster (2024)), the United States Supreme Court upheld the Lanham Act’s Names Clause restriction. That case presented a challenge to the Lanham Act provision based on the First Amendment Free Speech clause. In recent years, the Supreme Court has been open to the idea that the First Amendment can be used to challenge various parts of the Lanham Act. For example, on First Amendment grounds, the Court has struck down Lanham Act provisions that prohibited registration of “disparaging” trademarks and ones that could be deemed “scandalous” and/or “immoral.”

In Vidal, the applicant attempted to register a trademark for the phrase “TRUMP TOO SMALL.” The reference is, of course, to former President Donald Trump. The former President did not give permission for the use of his name in the proposed trademark. As such, the USPTO rejected the trademark for registration, citing the relevant provision in the Lanham Act.

The trademark applicant duly appealed arguing that his proposed trademark should be exempt from the Lanham Act prohibition on First Amendment grounds. Since President Trump is a political figure, the proposed trademark was intended to convey a political message about President Trump’s policies. Since political statements are protected by the First Amendment, an exception should be made, and registration should be allowed.

In the end, the Court — by a 9-0 vote — rejected the First Amendment challenge and upheld the correctness of the USPTO’s refusal to register the trademark. The Court’s majority opinion pointed out that the Lanham Act Names Clause restriction was viewpoint neutral since a range of political messages had been refused registration, such as “Welcome President Biden,” “I Stump for Trump,” and “Obama Pajama.” From that frame, all members of the Court reached the conclusion that the Names Clause was compatible with the First Amendment.

The Justices arrived at their opinions in very separate ways. The majority opinion by Justice Thomas (joined by five other Justices) used a historical approach. For centuries, using the names of living persons in a trademark has not been allowed. Thomas saw no reason to upset that long tradition. Justice Kavanaugh and Chief Justice Roberts authored a concurring opinion suggesting that the Names Clause ban could be and should be upheld even in the absence of historical tradition. Justice Barrett also wrote a concurring opinion stating that, in writing the Names Clause, Congress made a justifiable decision about whether names should be allowed in trademarks.

Justice Sotomayor also wrote a concurring opinion (joined by Justices Kagan and Jackson) upholding the Names Clause because it simply sets a precondition to the granting of a government benefit (trademark registration). Sotomayor noted that registration refusal did not prevent the applicant from speaking or selling objects that included the mark. This, according to Sotomayor, was well within the Court’s First Amendment jurisprudence.

Understanding the Lanham Act’s Names Clause: 15 U.S.C. § 1052(c)

The statutory basis for the Names Clause is 15 U.S.C. § 1052(c), which states that the USPTO shall refuse registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” The provision is categorical — there is no balancing test and no exception for political or satirical marks. The USPTO Trademark Manual of Examining Procedure (TMEP) § 1206 provides detailed guidance on how examiners evaluate whether a proposed mark “identifies” a living person. Generally, the examining attorney must have evidence that a segment of the public would associate the name in the mark with a specific living individual.

Practical Implications for Brand Owners

For businesses and brand owners, Vidal v. Elster sends a clear signal: do not attempt to register a mark incorporating a living person’s name without first securing written consent from that individual. This is true even if the intended use is clearly satirical or political. The consent requirement is not waived by the public-figure status of the person named, the political nature of the message, or the fact that the mark has been in commercial use.

Securing consent is a contract matter. Written consent agreements should specify the scope of permitted uses, the trademark categories for which registration is sought, whether the consent survives the death of the individual, and what happens if the person later objects to how the mark is being used. Poorly drafted consent agreements have led to litigation between brand owners and the individuals whose names were licensed. A consent agreement should be negotiated and documented before any registration application is filed.

Comparison to the Deceased Names Doctrine

The Names Clause applies only to living persons. Once a person is deceased, their name can generally be registered as a trademark without the consent restriction, though other Lanham Act bars may still apply — such as § 1052(a)’s prohibition on marks that falsely suggest a connection with a deceased person of historical significance. See In re Nieves & Nieves LLC, 113 USPQ2d 1639 (TTAB 2015) (refusing “OBAMA PAJAMA” under § 1052(a)). Trademark counsel should evaluate both the living-person consent issue and any potential § 1052(a) concerns when a mark incorporates a well-known name.

Right of Publicity vs. Trademark Rights

Even where a trademark incorporating a living person’s name is registrable — or where the applicant simply uses the name without registering — state right-of-publicity laws impose independent obligations. Most states recognize that a living person has the right to control commercial use of their name and likeness. California Civil Code § 3344 and New York Civil Rights Law §§ 50-51 are among the most well-developed right-of-publicity statutes. A business using a living person’s name in commerce without consent may face right-of-publicity claims regardless of how the trademark question resolves. The intersection of federal trademark law and state right-of-publicity law makes legal counsel essential for any brand strategy involving real individuals’ names.

What the Justices’ Divergent Opinions Mean Going Forward

The fractured concurrences in Vidal leave open broader questions about First Amendment challenges to other Lanham Act restrictions. Justice Thomas’s historical approach has limited reach beyond provisions with deep historical roots. Justice Barrett’s statutory-discretion approach and Justice Sotomayor’s government-benefit framing could each be invoked in future challenges to Lanham Act bars — such as the flag-and-insignia restriction of § 1052(b) or the geographic descriptiveness bar of § 1052(e)(2). Brand owners and practitioners should watch how lower courts apply the varying rationales from Vidal as subsequent First Amendment trademark challenges work their way through the courts.

Contact The Trademark Attorneys at Revision Legal

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