Key Takeaways
- The Supreme Court reversed the Federal Circuit's decision, holding that the names clause of Lanham Act, which prohibits the registration of a mark that consists of a name identifying a particular living individual without consent, does not violate First Amendment rights.
- Marks violating the names clause are non-registrable even if the mark expresses a political, ideological, or social viewpoint, or another form of protected speech.
- This decision only applies to the names clause, and an additional analysis is required to determine if other content-based, viewpoint-neutral trademark restrictions violate the Constitution.
Background
Steve Elster sought to federally register the mark "Trump too small" for use on shirts and hats with the United States Patent and Trademark Office (USPTO). The USPTO examiner denied the application due to violation of the names clause, which prohibits registering a mark that "[c]onsists of or comprises a name...identifying a particular living individual except by his written consent." Despite Elser's argument that this refusal violated his First Amendment right to free speech, the Trademark Trial and Appeal Board affirmed the examiner's decision.
Elster appealed, and the Federal Circuit reversed the Board's decision, holding that the names clause did in fact violate the First Amendment. The Federal Court analyzed the constitutionality of the names clause under intermediate scrutiny. Under this test, the challenged law must further an important government interest by means that are substantially related to that interest. The Court concluded that the names clause did not survive intermediate scrutiny. More specifically, the Court found that the names clause did not further any important governmental interest.
The Federal Circuit's decision was thereafter appealed to the Supreme Court.
Supreme Court Grants Cert.
The Supreme Court granted certiorari to determine whether the names clause violates the First Amendment, emphasizing the need to distinguish between content-based and content-neutral regulations. Content-based regulations target the subject matter or content of speech and are generally unconstitutional unless the government can show that such restriction is narrowly tailored to serve a compelling interest. On the other hand, content-neutral regulations target all speech regardless of its substance.
The Court held that the names clause is content-based, but viewpoint-neutral. Regardless of the message that a registrant wants to convey, the names clause prohibits registration of marks that use another's name without consent. Therefore, "[t]he Government is thus not signaling out a trademark 'based on the specific motivating ideology or the opinion or perspective of the speaker.'" Despite considering applying heightened scrutiny to a viewpoint-neutral trademark restriction, the Court ultimately decided that it did not apply due to the "uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment."
In its analysis, the Court also highlights the longstanding restriction on trademarking names, clarifying that trademarks are meant to serve as source identifiers. Preventing a person from using another's name ensures that this function is upheld. Additionally, trademarks reflect information about the mark holder, including reputation. The Court has previously recognized "that a party has no First Amendment right to piggyback off the goodwill another entity has built in his name."
The Supreme Court ultimately reversed the decision of the Federal Circuit. However, the Court's conclusion was narrow, noting that their decision did not provide a framework for determining the constitutionality of all content-based, viewpoint-neutral trademark restrictions.
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