IP Tech Knowledgy

The Supreme Court has ruled that a trademark regulation prohibiting the registration of a living person’s name without the person’s consent does not violate the First Amendment. But the trademark outcome is not the only thing that matters in the opinion. While the Court’s decision was unanimous, the Justices, even conservative and liberal, had divergent views on what legal theory should be considered, showing a concerning divide that may permeate other cases and other subjects.

As to the trademark rule, Vidal v. Elster, focused on whether the phrase “Trump Too Small” for clothing could be registered at the U.S. Patent and Trademark Office, in light of a USPTO regulation  disallowing registration for a name that identifies a particular living individual except by his written consent. In this case, the applicant was playing on the double entendre in Senator Marco Rubio’s comments in a 2016 presidential debate about then-candidate Donald Trump. The term was meant to mock Trump.  

The Court found that the USPTO prohibition was “viewpoint-neutral” and would not lead to inconsistent application based on any particular perspective, thus the restriction on that “speech” did not violate the First Amendment. This outcome is different from fairly recent Supreme Court cases where USPTO regulations were negated because they conflict with the First Amendment due to being prone to different interpretations by different people. In the earlier decisions, the Court struck down the provision of the Lanham Act prohibiting registration of marks that are “disparaging” (the application was for the word “Slants” for a musical group), and the provision prohibiting marks that are “immoral or scandalous” (the application was for the word “Fuct” for clothing). The difference appears to be that the name “Trump” is just a name and cannot be interpreted in different ways, where “Slants” and “Fuct” could have different connotations from different viewpoints. The Court admitted that the Elster case is a narrow ruling.  The Justices likely felt they needed to address the situation because the lower Federal Circuit had ruled that the First Amendment did override the PTO regulation.

The case only deals with registration, and does not prohibit using the phrase – and expressing views – without a registration.

Perhaps a more notable aspect of the case is the fissure among the Justices that seems to overshadow the admittedly narrow ruling.  

In the majority opinion, written by Justice Thomas, the basis for the decision was that the “history and tradition” of restricting name-based trademarks was enough to uphold the regulation.  That originalist conservative view has permeated other Supreme Court cases, such as Second Amendment gun restrictions, and caused consternation among liberals.  In Elster, even the conservative Justices, seemed to be sparring over what principles apply.

Justice Thomas wrote that the Court “need look no further” than history and tradition.  In one Concurrence, Justice Kavanaugh with Chief Justice Roberts wrote that the “historical pedigree” might not be necessary to support the opinion. In another Concurrence, Justice Barrett, joined by Justices Kagan, Sotomayor, and Jackson, lamented that “the Court never explains why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question.  I would adopt a standard, grounded in both trademark law and First Amendment precedent, that reflects the relationship between content-based trademark registration restrictions and free speech.”  In still a different Concurrence, Justice Sotomayor, with Justices Kagan and Jackson, asserted that the standard First Amendment test should be applied, chiding the majority that “Considering this Court has never applied this kind of history-and-tradition test to a free-speech challenge, and that “[n]o one briefed, argued, or even hinted at the rule that the Court announces today,” one would have expected a more satisfactory explanation.”  

Elster settled a narrow trademark issue and demonstrated the broad division in the Court.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw. com