Heightened Constitutional Scrutiny is Not Required for Content-Based Trademark Registration Laws That Are Viewpoint-Neutral—Vidal v. Elster (Guest Blog Post)

By Lisa Ramsey, Professor of Law, University of San Diego School of Law

The Supreme Court held in Elster that Section 2(c) is consistent with the First Amendment, but the Justices disagree on how to evaluate the constitutionality of trademark restrictions

In a unanimous opinion published on June 13, 2024, the US Supreme Court held in Vidal v. Elster that a federal trademark law banning registration of a living person’s name without consent did not violate the Free Speech Clause of the First Amendment. Section 2(c) of the Lanham Act (15 USC §1052(c)) prohibits registration of a trademark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual” without that person’s written consent. The United States Patent and Trademark Office (USPTO) applied this provision when it refused Steve Elster’s application to register the phrase “Trump Too Small” as a trademark for shirts. This law protects the rights of publicity and privacy of recognizable people (like former President Donald Trump) who do not want third parties to register their name as a mark for goods or services and obtain an exclusive trademark right that can be enforced against others, including the person with that name.

At the USPTO and in the Federal Circuit Court of Appeals, Elster argued the trademark examining attorney’s application of this trademark registration law to his critical political message violated the First Amendment. In support of his arguments, he cited Matal v. Tam (2017) and Iancu v. Brunetti (2019), two cases in which the Supreme Court held that the government’s ban in Section 2(a) of the Lanham Act (15 USC §1052(a)) on registration of marks containing disparaging, immoral, or scandalous matter is inconsistent with the First Amendment. The Federal Circuit agreed with Elster, and held that Section 2(c) was also an unconstitutional regulation of expression as applied to Elster’s proposed mark. It said: “the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice, which is not alleged here.” The Supreme Court heard oral argument in the case on November 1, 2023, and reversed the Federal Circuit in its June 2024 opinion which upheld the constitutionality of the “names clause” of Section 2(c).

Other commentators have provided excellent summaries of the Supreme Court’s holding in Elster, including trademark experts Ted Davis and Ryan Kurtiak, Laura Heymann, Rebecca Tushnet, and John Welch; constitutional law professors Josh Blackman, Mike Ramsey, and Eugene Volokh; and news reporters Kyle Jahner and Aruni Soni. Therefore, this blog post (like my thread on Twitter/X) will focus on the implications of the Elster decision for litigants interested in raising First Amendment challenges to trademark registration and enforcement laws. For a detailed discussion of the facts of this trademark dispute, see my spring 2023 guest post on the Technology & Marketing Law Blog about the Federal Circuit’s opinion in In re Elster and fall 2023 post on this blog after the Supreme Court oral argument in Vidal v. Elster, in which I predicted that the Court would find Section 2(c) constitutional.

No framework for evaluating First Amendment challenges to trademark laws? Importantly, all of the Justices in Elster agreed that (1) trademark laws regulate speech based on its content (historically and today), (2) heightened scrutiny is required by the Court’s First Amendment precedents for trademark laws that discriminate based on viewpoint, (3) heightened constitutional scrutiny is not automatically required for viewpoint-neutral trademark laws, and (4) Section 2(c) of the Lanham Act does not discriminate based on the viewpoint of the message or the speaker. (Note I discuss why substantive trademark registration and enforcement laws regulate speech based on its content in “Increasing First Amendment Scrutiny of Trademark Law” and “Free Speech Challenges to Trademark Law After Matal v. Tam”.) The Justices disagreed, however, on whether the Court should set forth a general free speech framework for evaluating constitutional challenges to trademark laws and on how to determine the constitutionality of Section 2(c)’s “names clause.”

In Part IV of the majority opinion written by Justice Thomas (joined by Chief Justice Roberts and Justices Alito, Gorsuch, and Kavanaugh), the Elster Court said: “We do not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor do we suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. We hold only that history and tradition establish that the particular restriction before us, the names clause in §1052(c), does not violate the First Amendment.” In a short concurring opinion joined by Chief Justice Roberts, Justice Kavanagh explained that he agreed “with the Court that the names clause is constitutional, particularly in light of the long history of restricting the use of another’s name in a trademark. In my view, a viewpoint-neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree.”

Justices Barrett and Sotomayor wrote concurring opinions in which they argued that the Court should adopt a framework for how to evaluate free speech challenges to viewpoint-neutral restrictions on trademark registration. (Justice Barrett’s opinion was joined in full by Justice Kagan, and in part by Justices Sotomayor and Jackson, while Justice Sotomayor’s opinion was joined in full by Justices Kagan and Jackson.) After discussing the inherently content-based nature of trademark law and the Court’s First Amendment precedents, these Justices proposed that a trademark registration law should be deemed consistent with the First Amendment if it is reasonable in light of the purpose(s) of trademark law. Justice Barrett said the law must be “reasonable in light of the trademark system’s purpose of facilitating source identification.” (Page 2 of Justice Barrett’s concurring opinion.) Justice Sotomayor provided the following framework: “The analysis should proceed in two steps. First ask whether the challenged provision targets particular views taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trademark system. Specifically, the trademark registration bar must reasonably serve its purpose of identifying and distinguishing goods for the public. If the challenged provision is both viewpoint neutral and reasonable, then it does not violate the Free Speech Clause.” (Pages 5-6 of Justice Sotomayor’s concurring opinion.)

While the majority of the Court did not agree on a comprehensive framework in Elster, the Court’s decisions in Tam, Brunetti, and Elster suggest at least a partial free speech framework that can be used to evaluate some First Amendment challenges to trademark laws.

(1) Does this trademark law discriminate based on viewpoint? First, if the content-based trademark statute, regulation, common law rule, or application of law by the court or USPTO discriminates based on viewpoint, it is subject to heightened scrutiny under the First Amendment. Justice Thomas explains the difference between content-based and viewpoint-based laws when discussing the Court’s First Amendment precedents:

A content-based regulation targets speech based on its communicative content, restricting discussion of a subject matter or topic. As a general matter, a content-based regulation is presumptively unconstitutional and may be justified only if the government proves that it is narrowly tailored to serve compelling state interests. Our precedents distinguish further a particularly egregious form of content discrimination—viewpoint discrimination. A viewpoint-based regulation targets not merely a subject matter, but particular views taken by speakers on a subject. It is also generally subject to heightened scrutiny, though viewpoint discrimination’s violation of the First Amendment is more blatant.

(Page 4 of the Opinion (cleaned up; citations and internal quotations omitted).) Heightened scrutiny is a rigorous—and often fatal—form of constitutional scrutiny, and it is typically called “strict scrutiny” analysis. Strict constitutional scrutiny also requires the challenged law to be the least restrictive means of advancing the compelling government interest.

The names clause in Section 2(c) and most other trademark laws do not discriminate based on viewpoint, so after Elster, these types of laws are not automatically subject to heightened scrutiny analysis, as discussed next.

(2) Is there a historical tradition of viewpoint-neutral restrictions on this type of speech in trademark law? If this content-based trademark law does not discriminate based on viewpoint, the next step is to ask whether there is a historical tradition of the government restricting this type of speech. If history and tradition suggest that this viewpoint-neutral government regulation has coexisted for a long time with the Free Speech Clause in the First Amendment, the trademark restriction is probably constitutionally valid. Such a law is also more likely to survive First Amendment scrutiny if it furthers the historical and current purpose(s) of trademark law. If there is a strong historical tradition of this type of trademark law, there is no need after Elster to apply strict, intermediate, or rational basis scrutiny, or to consider if the registration law is reasonable.

In Elster, a majority of Justices (Chief Justice Roberts and Justices Thomas, Alito, Gorsuch, and Kavanaugh) held there was a historical tradition of government regulations of names in trademark law and thought this fact was determinative on the issue of whether the law was consistent with the First Amendment. Justices Barrett, Sotomayor, Kagan, and Jackson found information about the law’s history and tradition to be useful—but not determinative—when evaluating the constitutionality of Section 2(c). I strongly recommend a close reading of Justice Thomas’ majority opinion and Justice Barrett’s and Sotomayor’s critiques of the majority’s approach in their concurring opinions.

Importantly, all of the Justices in Elster agree that evidence of a historical tradition of a trademark law coexisting with the First Amendment is not required for a trademark law to be deemed constitutionally valid. That means a different First Amendment analysis is required for viewpoint-neutral trademark laws with a more recent pedigree, as discussed next.

(3) If there is no relevant historical tradition, is this viewpoint-neutral trademark law consistent with the First Amendment for other reasons? If there is not a sufficient historical pedigree for this type of trademark law, unfortunately the majority in Elster provides no guidance on whether one of the Court’s traditional constitutional tests (e.g., intermediate scrutiny analysis) or a new trademark-specific free speech test should be used when the government is not regulating trademarks based on the viewpoint of the message or the speaker. None of the Justices in Elster cited Central Hudson or discussed that opinion’s intermediate scrutiny test that typically applies to regulations of commercial speech. (Note my paper “Free Speech Challenges to Trademark Law After Matal v. Tam” discusses the Central Hudson test and the Court’s other traditional First Amendment tests that could apply to content-based trademark laws that regulate commercial and/or noncommercial uses of marks.)

A proposed constitutional test for trademark law. In a blog post I wrote after the oral argument at the Supreme Court in Elster, I proposed that the Court consider adopting a new First Amendment test that could be used by courts to evaluate the constitutionality of trademark laws that do not discriminate based on viewpoint:

First, courts should identify the goals of this specific trademark law that are important government interests. Second, they must confirm this trademark law directly and materially furthers those trademark goals. Third, it is critical for courts to discuss whether and how the trademark law endangers free speech, and ensure the law does not suppress or chill protected expression more than necessary to further those goals.

I believe this test has several benefits over the analysis proposed by the Justices in the majority and concurring opinions in Elster. First, it requires courts to focus on the specific trademark law that is challenged under the First Amendment, rather than the historical pedigree of a certain type of trademark law (restrictions relating to names) or the general purpose(s) of the trademark system (e.g., identifying a product’s source, or preventing source confusion). Section 2(c) of the Lanham Act primarily protects the rights of publicity and privacy of politicians, celebrities, and other recognized individuals. It does not require evidence that this use of another person’s name or image is likely to cause confusion. Of course, this law can prevent the registration of confusing trademarks, but other provisions in the Lanham Act more directly apply to unauthorized uses of another’s name or image that cause confusion. This includes Section 2’s ban on registration of marks that “falsely suggest a connection” with another person and of marks likely “to cause confusion” with a prior mark. (Section 2(a) & (d), 15 USC §1052(a)&(d).)

The second benefit of my proposed test–compared to the historical tradition approach and the reasonableness test–is that it is less subjective. Asking whether this specific trademark law directly and materially furthers the trademark goal(s) identified under the first prong of the test is a more objective analysis. It requires less judicial-discretion than a determination of the appropriate level of generality or the relevant time period for the history-and-tradition test, or evaluating whether a certain trademark registration provision is reasonable under the law’s general goal of facilitating the source identification of products. (See the opinions in Elster written by Justices Barrett, Sotomayor, and Thomas for a detailed critique of their different approaches.) As I discuss in my blog post after the oral argument, it makes more sense under the Court’s First Amendment jurisprudence to ask whether Section 2(c) directly and materially protects the rights of publicity and privacy of living individuals. It does.

The third benefit of my proposed test is that it considers the trademark law’s harm (if any) to expression protected by the First Amendment. In the trademark registration context, there is little or no harm when Elster or another trademark applicant cannot register a political message like “Trump Too Small” for shirts or other subject matter set forth in Section 2 of the Lanham Act. As noted by some of the Justices in Elster, Elster can still display this critical slogan on apparel without a registration. Consideration of the harm to free expression is essential in the trademark enforcement context since a court may apply trademark infringement or dilution laws to actually suppress informational or expressive uses of trademarks that are not false or misleading.

The implications of Elster for trademark dilution law. In “Free Speech Challenges to Trademark Law After Matal v. Tam”, I explained why trademark dilution laws regulate speech based on its viewpoint and should be subject to strict scrutiny analysis under the Court’s First Amendment jurisprudence. The dilution provision of the federal trademark enforcement law can be invoked by owners of famous marks to suppress the nonmisleading commercial speech of competitors and others under Lanham Act Section 43(c), 15 USC §1125(c). Proposed trademarks may also be refused registration on dilution grounds under Lanham Act Section 2(f), 15 USC §1052(f). The dilution-by-tarnishment provision is especially problematic, as it regulates offensive speech just like the laws struck down by the Supreme Court in Tam and Brunetti.

When courts consider First Amendment challenges to trademark dilution law, the Elster opinion has language which will likely be included in briefs and amicus briefs filed on both sides of the debate. Challengers and free speech advocates will note that Elster provides that viewpoint-based trademark laws are subject to heightened scrutiny, and argue (like me) that dilution law discriminates based on viewpoint and fails that rigorous constitutional analysis. Moreover, even if the Court determines this law is viewpoint-neutral, dilution law does not have the same historical pedigree as Section 2(c)’s names clause or laws targeted at unauthorized uses of another’s mark that cause source confusion, such as trademark infringement law.

The government and defenders of trademark dilution law will likely argue this law in the registration and enforcement statutes of the Lanham Act does not discriminate based on viewpoint. They may concede that trademark dilution law is a relatively new doctrine in trademark law, but then note that the Justices agreed in Elster that a historical tradition is not required for a viewpoint-neutral law to be deemed valid under the First Amendment. In addition, pages 17-18 of the Court’s opinion in Elster favorably cite San Francisco Arts & Athletics, Inc. v. United States Olympic Committee (1987), a Supreme Court case which upheld the constitutionality of a content-based law that protected the United States Olympic Committee’s investment in its reputation and goodwill symbolized by its Olympic marks against free riding by a corporation promoting the “Gay Olympic Games”. Moreover, the concurring opinions of Justices Barrett and Sotomayor explain that trademark laws help protect someone’s reputation and goodwill against others who may want to capitalize on the value of that person’s name or mark.

I believe this language about reputation and goodwill in Elster does not lead to the conclusion that the Court will find trademark dilution laws to be consistent with the First Amendment. First, as I have argued elsewhere, trademark infringement laws protect a trademark owner’s reputation and goodwill from free riding when they prevent another’s registration or use of a mark that is identical or confusingly similar to a prior mark. Thus, a person’s or entity’s reputation and goodwill are protected under trademark law regardless of whether the law also includes a trademark dilution provision, which applies regardless of whether this use of the mark causes actual or likely confusion. The provision of the Lanham Act which sets forth the intent of federal trademark law (Section 45, 15 USC §1127) does not include a purpose of protecting a trademark owner’s reputation and goodwill from nonconfusing uses. Second, the statements in Elster about protection of reputation and goodwill were made in the context of the Justices’ discussion about the names clause, and by the concurring Justices when they talked about trademark registration laws that do not suppress speech (unlike Lanham Act Section 43(c), 15 USC §1125(c)). Thus, this language in the opinions may not apply to trademark enforcement laws that can be invoked to enjoin diluting uses of marks regardless of whether they contain another person’s name.

After Elster, the Court will likely require application of a more rigorous First Amendment test than rational basis review or a reasonableness test when the dispute involves a free speech challenge to a trademark enforcement law. This includes trademark dilution law, and also trademark infringement laws (Lanham Act Section 32(1), 15 USC §1114(1); Lanham Act Section 43(a), 15 USC §1125(a)(1)(A)). The reason is that these types of trademark laws allow courts to grant injunctions and award monetary damages. Unlike trademark registration laws, trademark enforcement laws can be invoked to ban speech protected by the First Amendment. Due to this significant difference between these laws, trademark litigants should not assume that Justices Barrett, Sotomayor, Kagan, and Jackson would support use of a reasonableness test when a First Amendment challenge is made to trademark dilution law or other laws that enable the government to censor the expression of competitors and others.

Finally, the Court has recently stated in Elster and Jack Daniel’s Properties, Inc. v. VIP Products LLC, that the main focus of trademark law is in facilitating the source-identifying function of marks (e.g., who is responsible for making or selling this product) and preventing source confusion. This suggests that trademark laws without a historical pedigree that do not further one or both of these goals are more likely to be found inconsistent with the First Amendment.

In conclusion, it is unfortunate that the Supreme Court did not set forth a free speech framework in Elster that can generally be used in the trademark context. Still, the opinions of the Justices provide some guidance for courts considering the constitutionality of trademark dilution law and other trademark laws that regulate speech based on its content.