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Vidal v. Elster, No. 22-704 – Decided June 13, 2024
Today, the Supreme Court held that the Lanham Act’s prohibition on registration of trademarks that include a living person’s name without that person’s consent does not violate the First Amendment.
- “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.”
Justice Thomas, writing for the Court
Background:
The Lanham Act establishes certain statutory requirements for trademark registration. One requirement is the Act’s “names clause”—no trademark may include “a name, portrait, or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). In 2018, Steve Elster applied to register the mark “Trump too small,” a reference to then-President Donald J. Trump. The U.S. Patent and Trademark Office denied his request because he had not obtained written consent from President Trump.
Elster appealed, and the Federal Circuit reversed, holding that the names clause violated Elster’s right to free speech under the First Amendment. The Federal Circuit explained that the names clause is a content-based restriction, which is subject to heightened scrutiny under the First Amendment. And it held that the names clause does not satisfy heightened scrutiny here because there is no government interest in restricting speech critical of government officials in the trademark context.
Issue:
Whether the refusal to register a mark under the names clause violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.
Court’s Holding:
No. The names clause does not violate the First Amendment because, while it is content based, it is viewpoint neutral and fits within historical tradition.
What It Means:
- The Court underscored that today’s decision is “narrow” because it holds “only that history and tradition establish that the particular restriction before [the Court] . . . does not violate the First Amendment.” Other content-based trademark requirements that lack a similarly well-established history and tradition may still be vulnerable to First Amendment challenges.
- Although the Court’s judgment was unanimous, the fractured opinions demonstrate the Court’s disagreement about how to assess the constitutionality of content-based trademark registration requirements. The majority focused on history and tradition. Justice Barrett in a separate opinion (joined by Justice Kagan in full and by Justices Sotomayor and Jackson in part) expressed the view that content-based restrictions should be upheld “so long as they are reasonable in light of the trademark system’s purpose of facilitating source identification.” Justice Sotomayor in a concurring opinion (joined by Justices Kagan and Jackson) said the Court should look to the “well-trodden terrain” of “trademark law and settled First Amendment precedent.”
- Today’s ruling distinguished other recent Supreme Court decisions holding that restrictions on trademark registrations do violate the First Amendment when they discriminate based on viewpoint. See Matal v. Tam, 582 U.S. 218 (2017) (disparaging marks) and Iancu v. Brunetti, 588 U.S. 388 (2019) (immoral or scandalous marks). In contrast to those precedents, the Court held that a uniform rule against registering trademarks that include personal names without consent does not single out a trademark based on the specific motivating ideology or the opinion or perspective of the speaker.
The Court’s opinion is available here.
Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the U.S. Supreme Court. Please feel free to contact the following practice group leaders:
Appellate and Constitutional Law Practice
| Thomas H. Dupree Jr. +1 202.955.8547 [email protected] | Allyson N. Ho +1 214.698.3233 [email protected] | Julian W. Poon +1 213.229.7758 [email protected] |
| Lucas C. Townsend +1 202.887.3731 [email protected] | Bradley J. Hamburger +1 213.229.7658 [email protected] | Brad G. Hubbard +1 214.698.3326 [email protected] |
Related Practice: Intellectual Property
| Kate Dominguez +1 212.351.2338 [email protected] | Y. Ernest Hsin +1 415.393.8224 [email protected] | Josh Krevitt +1 212.351.4000 [email protected] |
| Jane M. Love, Ph.D. +1 212.351.3922 [email protected] | Howard S. Hogan +1 202.887.3640 [email protected] | Ilissa Samplin +1 213.229.7354 [email protected] |
This alert was prepared by associates Daniel Adler and Jason Muehlhoff.
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Attorney Advertising: These materials were prepared for general informational purposes only based on information available at the time of publication and are not intended as, do not constitute, and should not be relied upon as, legal advice or a legal opinion on any specific facts or circumstances. Gibson Dunn (and its affiliates, attorneys, and employees) shall not have any liability in connection with any use of these materials. The sharing of these materials does not establish an attorney-client relationship with the recipient and should not be relied upon as an alternative for advice from qualified counsel. Please note that facts and circumstances may vary, and prior results do not guarantee a similar outcome.
The National Legal Aid & Defender Association (NLADA) has named Gibson Dunn one of its 2024 Beacon of Justice Award recipients, which recognizes honorees “for their efforts to address issues related to civil & human rights. ” The award is in recognition of the firm’s substantial pro bono work, including: (i) winning a historic jury verdict for Deon Jones, a peaceful protestor subjected to police violence; (ii) defending the Fearless Foundation, a nonprofit organization that provides Black women business-owners with charitable grants and mentorship; and (iii) assisting more than 300 Afghans with their humanitarian parole applications.
The Legal Benchmarking Group named Gibson Dunn as the winner of the 2024 Social Impact Pro Bono Firm of the Year award, at its inaugural 2024 Social Impact Awards Americas ceremony, “celebrating social impact and inclusion,” and recognizing “strides made by trailblazing firms in fostering diverse, equitable, and inclusive environments.”
Gibson Dunn lawyers were honored by the Daily Journal with its 2024 California Lawyer Award for their role in a “first-of-its-kind jury verdict in a historic civil rights case” in Deon Jones v. City of Los Angeles. The Award recognizes the best legal teams in California for their work over the past year.