Supreme Court of the United States (SCOTUS): While considering the instant matter revolving around US Patent and Trademark Office’s (USPTO) refusal to federally register “Trump too small” as a trademark on the ground that ‘Names Clause’ in the Lanham Act prohibits registration of a mark that “consists of or comprises a name (…) identifying a particular living individual except by his written consent”, the Full Bench of the Court unanimously held that USPTO’s refusal to register the afore-stated trademark under Lanham Act’s ‘Names Clause’, does not violate the First Amendment of the US Constitution.
The Court clarified that this decision does not set out any comprehensive framework vis-a-vis trademark restrictions. “The Court holds only that history and tradition establish that the particular restriction here, the Names Clause in §1052(c), does not violate the First Amendment”.
Background: In 2016, after watching a Presidential primary debate exchange between then-candidate Donald Trump and Senator Marco Rubio, the respondent sought to federally register the trademark “Trump too small” to use on shirts and hats. An examiner from the Patent and Trademark Office refused registration based on the “names clause,” of Lanham Act.
The Trademark Trial and Appeal Board affirmed USPTO’s refusal, rejecting the respondent’s argument that the names clause violates his First Amendment right to free speech. However, the Federal Circuit reversed the Appeal Board’s decision.
Therefore, the petitioner, who is the Undersecretary of Commerce for Intellectual Property and Director of USPTO, approached the Supreme Court.
Court’s Assessment: The Bench comprising of John Roberts, CJ., and Clarence Thomas, Samuel Alito, Sonia Sotomayor, Elena Kagan, Neil Gorsuch, Brett Kavanaugh, Amy Coney Barrett and Ketanji Brown Jackson, JJ., unanimously rejected the argument raised by the respondent vis-a-vis violation of his First Amendment rights.
The Court held that the ‘Names Clause’ of Lanham Act does not violate the First Amendment. It was noted that when enforcing the First Amendment’s prohibition against abridging freedom of speech, the Court must distinguish between content-based and content-neutral speech regulations. It was further pointed out that a content-based regulation “targets speech based on its communicative content,” and is ‘presumptively unconstitutional,’. The Court noted that viewpoint discrimination is a particularly “egregious form of content discrimination” that targets not merely a subject matter “but particular views taken by speakers on the subject”. Relying on many of its precedents, the Court pointed out that trademark restrictions that discriminate based on viewpoint violate the First Amendment.
The Court pointed out that Lanham Act’s ‘Names Clause’ does not single out a trademark “based on the specific motivating ideology or the opinion or perspective of the speaker,”, it does not facially discriminate against any viewpoint. Although the ‘Names Clause’ is not viewpoint based, it is content based because it applies to particular speech because of the topic discussed or the idea or message expressed, i.e., it turns on whether the proposed trademark contains a person’s name.
The Court stated that a content-based regulation of speech is presumptively unconstitutional, however, SCOTUS has not yet decided whether heightened scrutiny extends to a content-based but viewpoint-neutral trademark restriction. “Trademark rights have always coexisted with the First Amendment, and the inherently content-based nature of trademark law has never been a cause for constitutional concern”.
Delving into the history of development of trademark law in the US, the Court stated that in 1870, Congress enacted the first federal trademark law, containing prohibitions on what could be protected as a trademark. It restricted a trademark based upon its content. And as trademark disputes increased, courts continued to assess trademarks based on their content. The content-based nature of trademark law did not change when Congress enacted the Lanham Act in 1946. Lanham Act’s comprehensive system for federal registration of trademarks continues to distinguish based on a mark’s content. “This history demonstrates that restrictions on trademarks have always turned on a mark’s content and have existed harmoniously alongside the First Amendment from the beginning. That relationship suggests that heightened scrutiny need not always apply in this unique context”.
The Court stated that the history and tradition of restricting trademarks containing names indicates that the ‘Names Clause’ is compatible with the First Amendment. The Court pointed out that restrictions on trademarking names have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another’s trademark. It was further pointed out that the common-law approach protected only a person’s right to use his own name, an understanding that was carried over into federal statutory law and included in the Names Clause.
The Court further noted that restriction on trademarking names also reflects trademark law’s historical rationale of identifying the source of goods and thus ensuring that consumers know the source of a product and can evaluate it based upon the manufacturer’s reputation and goodwill. Moreover, the Names Clause respects the established connection between a trademark and its protection of the mark holder’s reputation.
Relying on relevant precedents, the Court pointed out that it has also recognized that a party has no First Amendment right to piggyback off the goodwill another entity has built in its name. The Court emphasized that a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the Names Clause fits within that tradition. The Names Clause reflects the common-law tradition by prohibiting a person from obtaining a trademark of another living person’s name without consent, thereby protecting the other’s reputation and goodwill. “A firm grounding in traditional trademark law is sufficient to justify the content-based trademark restriction here, but a case presenting a content-based trademark restriction without a historical analog may require a different approach. In this case, the Court sees no reason to disturb this longstanding tradition, which supports the restriction of the use of another’s name in a trademark”.
The Court also clarified that its decision in the instant case does not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional, nor does the decision suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction.
[Katherine K. Vidal v. Steve Elster, No. 22—704, decided on 13-06-2024]
