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.
Contact The Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
