On Thursday, the court unanimously rejected an attempt to force the Patent and Trademark Office (PTO) to register “Trump too small” as a trademark for T-shirts mocking the former president. Steve Elster argued that the Lanham Act provision directing the PTO to refuse any mark identifying “a particular living individual” violated his First Amendment rights. Despite sharp differences in their reasoning, all the justices agreed that the First Amendment allows the PTO to reject the mark.
All nine justices concurred on the basic analysis framework, detailed in the principal opinion by Justice Clarence Thomas. Writing for six justices (excluding Justices Elena Kagan, Sonia Sotomayor, and Ketanji Brown Jackson), Thomas explained that the restriction is viewpoint-neutral but not content-neutral.
He noted that the court had previously concluded that viewpoint-based trademark restrictions violate the First Amendment.
The previous restrictions were viewpoint-based as they allowed some viewpoints while prohibiting others. In contrast, the current ban is viewpoint-neutral, as evidenced by the PTO’s rejection of trademarks like “Welcome President Biden,” “I Stump for Trump,” and “Obama Pajama,” which span various political viewpoints.
However, Thomas stated that the restriction remains content-based, as it hinges on the content of the trademark, specifically whether it contains a person’s name without their consent.
In Vidal v. Elster, the justices were considering for the first time the constitutionality of a content-based but viewpoint-neutral trademark registration.
Thomas supported the statute, citing the historical tradition of content-based trademark restrictions that prevent individuals from monopolizing names in commerce. For Thomas, this tradition validated the “names clause” as part of a long-standing legal precedent, justifying its continuation.
The separate opinions reflected less reliance on historical analysis. Justice Brett Kavanaugh and Chief Justice John Roberts largely agreed with Thomas but wrote a brief concurrence suggesting that a viewpoint-neutral, content-based trademark restriction might still be constitutional without historical precedent.
Justice Amy Coney Barrett, joined largely by Sotomayor, Kagan, and Jackson, argued against using history and tradition alone to determine the clause’s constitutionality. She suggested a doctrinal First Amendment approach, permitting restrictions reasonable in light of trademark purposes.
The most critical opinion came from Sotomayor, joined by Kagan and Jackson. She criticized Thomas’s historical approach, comparing it to selectively finding supportive opinions at a crowded party. Sotomayor highlighted the confusion caused by similar historical analyses in previous cases.
On the merits, she found the names clause permissible as it conditions trademark registration—a government benefit—on content without restricting speech or commerce. Thus, she considered the provision consistent with First Amendment precedents.
Given the justices’ division in this case, similar to previous First Amendment and trademark law cases, it is likely that future challenges to other Lanham Act provisions will arise, with the court remaining equally divided.
