Supreme Court Backs Name Protection Rights Over First Amendment Claim to Trademark
In a decision on June 13, the U.S. Supreme Court backed away somewhat from recent rulings protecting First Amendment rights in trademark registrations. At the same time, the Court confirmed the right of individuals to protect against others registering trademarks containing the individual’s name.
In the Vidal v. Elster decision, the Court held that the U.S. Patent & Trademark Office was not required to allow a trademark applicant to register “Trump Too Small” as a trademark, despite the applicant’s First Amendment rights. The Court upheld a rule that prohibits a person from registering a trademark that identifies “a particular living individual except by his written consent” because “history and tradition establish” that the restriction does not violate the First Amendment.
Vidal appears contrary to recent cases in which the Supreme Court has struck down, on First Amendment grounds, rules that prohibited registering trademarks that disparaged people or institutions or were scandalous or immoral. In those rulings, the Supreme Court held that the government could not prohibit a band from registering a trademark for “SLANTS” or a clothing firm from registering its trademark “FUCT.”
The majority opinion in Vidal stated that a key distinction in the case was that the rule favoring the rights of individuals to their names was “viewpoint-neutral.” Courts consider this factor to be significant in deciding whether a government policy violates the First Amendment. The regulation favoring the rights of individuals to their names against trademark interlopers, however, is “content-based,” which less often is a sufficient basis to strike down such rules.
Justice Clarence Thomas wrote the Court’s majority opinion in the highly fractured Vidal decision, with three other justices writing concurring opinions. Before the decision, the Supreme Court had “never applied this kind of history-and-tradition test to a free-speech challenge,” Justice Sonia Sotomayor wrote in her highly critical concurring opinion, which two other justices joined.
Justice Amy Coney Barrett also sharply criticized Justice Thomas’ “history-and-tradition” test in her concurring opinion, which three other justices joined in part. Justice Barrett advocated for adopting a standard grounded in trademark law and First Amendment precedent: that content-based criteria for trademark registration do not abridge the right to free speech so long as they reasonably relate to the preservation of the markowner’s goodwill and the prevention of consumer confusion.
The Vidal decision aligns with last year’s Supreme Court decision in Jack Daniel’s Properties v. VIP Products that a toy manufacturer did not necessarily have a First Amendment right to satirize a whiskey company’s trademarks.
Given the splintered nature of the decision, and the political overtones of a case dealing with former President Donald Trump, it remains to be seen whether Vidal will have ramifications outside the limited domain of trademark law. The case may set an important new First Amendment path in trademark law (and perhaps government regulatory law more generally), or it may be cabined on its unique facts.
Please contact Mary Ellen Roy or any member of Phelps’ Intellectual Property or Media and First Amendment Law teams if you have questions or would like further guidance.
