The Supreme Court held last Thursday that the U.S. Patent and Trademark Office did not violate the First Amendment when the Office concluded that “Trump Too Small” could not be registered as a trademark. In a unanimous decision, the Court found that the USPTO did not discriminate based on the viewpoint expressed by the phrase when it rejected the trademark application, as the Respondent Steve Elster argued. Instead, the USPTO’s denial constituted a viewpoint-neutral restriction rooted in the Lanham Act’s prohibition on using a living person’s name without consent.
The Court’s holding in Vidal v. Elster reversed the Federal Circuit’s holding that the USPTO’s denial of Elster’s trademark application violated the First Amendment. Elster builds on other recent cases that explore the relationship between the Lanham Act and the First Amendment by clarifying how the Court ought to approach content-based but viewpoint-neutral trademark restriction. The majority distinguished the facts in Elster from those in Matal v. Tam and Iancu v. Brunetti, where it found the Lanham Act’s prohibitions on “disparaging trademarks” and on “immoral or scandalous trademarks” unconstitutional. Whereas Matal and Brunetti dealt with viewpoint rather than content-based restrictions, Vidal v. Elster marked the first time the Court has taken on viewpoint-neutral trademark restrictions.
Writing for the majority, Justice Thomas analyzed the Lanham Act’s restriction on using names as firmly rooted in the tradition and history of trademarks. Concurrences authored by Justice Barrett and by Justice Sotomayor attempted to take a more conventional approach rooted in trademark law and First Amendment precedent, departing from Justice Thomas’s historical analysis when doing so. This disagreement among the Court over the way to approach constitutional questions in relation to trademark law makes it unclear how the Court may approach future First Amendment challenges to trademark restrictions.
Article by David Griffith