By Shannon Kavanagh. Shannon is a 2L J.D. Candidate at the Sandra Day O’Connor College of Law at Arizona State University. She is an honors graduate of Penn State University and the Bellisario College of Communications with a degree in print and digital journalism and a minor in women, gender and sexuality studies. She is a part of the Lisa Foundation Patent and Trademark Clinic, and is an Associate Editor in the Sports and Entertainment Law Journal.
In recent years, the Lanham Act, which is the federal law governing trademark regulation, has been a topic of constitutional debate. Multiple Lanham Act cases have made their way to the Supreme Court over the last decade.
In a 2017 case, Matal v. Tam, Simon Tam, the lead singer of The Slants, wanted to trademark the name of his band.[1] He chose that name to reclaim the word “slants,” a historically derogatory term for Asian persons.[2] Tam’s application was denied on the basis that it violated the disparagement clause in Section 2(a) of the Lanham Act.[3] He later brought the case to federal court, where the Federal Circuit found the disparagement clause unconstitutional.[4] The Supreme Court affirmed, holding that the provision of Section 2(a) of the Lanham Act, which prohibited marks that disparaged any individual, living or dead, violated the First Amendment.[5]
Similarly, in a 2019 case, Iancu v. Brunetti, the Supreme Court determined the constitutionality of another provision of Section 2(a).[6] Specifically, the Court examined the provision that directed trademark examiners to deny applications with immoral or scandalous matter.[7] Respondent Erik Brunetti, an artist and entrepreneur, sought to federally register “FUCT,” which he used on his clothing brand.[8] The Supreme Court found that the provision was substantially overbroad, and therefore, a constitutional violation.[9] The Court relied on the same reasoning in Tam, finding that the provision too disfavors certain ideas, violating the First Amendment.[10]
Another Lanham Act case appeared before the Supreme Court in 2024.[11] After watching a 2016 Republican Party presidential debate, Steven Elster wanted to register “TRUMP TOO SMALL” as a trademark on the federal register.[12] He filed his trademark application in January 2018, covering goods in International Class 25, mainly shirts.[13] According to Elster, this trademark aimed to convey that Trump’s policies were diminutive.[14] Elster’s trademark application was originally denied by an examiner for violating the names clause of the Lanham Act, Section 2(c)[15], which prevents a person from registering a mark that consists of or comprises a name, portrait, or signature identifying a particular living individual, exempt by his written consent.[16] The examiner also stated that it did not matter that this trademark’s intent was political commentary because there is no statutory or case law carve-out for political commentary.[17] The Trademark Trial and Appeal Board affirmed the examiner’s decision.[18] The Federal Circuit reversed.[19]
Section 2(c) of the Lanham Act not only prohibits marks of full names, but also nicknames, surnames, and shortened names.[20] Importantly, the consent given to another individual must be more than just consent to use one’s name.[21] The name owner must give their consent to register their name as a trademark.[22] In Vidal, the Supreme Court upheld the names clause of the Lanham Act, finding that it does not violate the First Amendment right to freedom of speech.[23]
On first glance, this decision may seem to veer from the Supreme Court’s recent decisions regarding the constitutionality of other trademark restrictions in the Lanham Act. The Court distinguished this case from the prior two cases by drawing a line between content-based language and content-neutral language.[24] In Vidal, the Court categorized the names clause as a regulation on content-based but viewpoint-neutral material.[25] Conversely, in Tam and Brunetti, the regulations were viewpoint-based.[26]
In Vidal, the Court looked to the history of trademark law to determine how they would evaluate a viewpoint-neutral restriction.[27] The purpose of trademarks is to indicate the owner of the goods and the source or origin of the manufacture.[28] According to the Court, a person’s name is their property, and they have a right to use that property in business.[29] Using another individual’s name for one’s own business does not allow for a consumer to properly identify the source of the goods or the source of the manufacture.[30]
The names clause also makes a distinction between publicly recognizable names and ones unknown to the public.[31] Section 2(c) is only triggered if the name is publicly recognized.[32] Under section 2(c)’s two factor test, the person has to be so well known that the public would reasonably assume the connection, or the person is publicly connected with the business in which the mark is being used.[33] Donald Trump clearly meets the first factor, being so well known that the public could reasonably assume that he is the source of the trademark.
In Vidal, the Court concluded in stating that the tradition of restricting the trademarking of names has aligned with the First Amendment, and the names clause fits within that tradition.[34] The Court also noted that this decision is narrow and should not be used as a comprehensive framework for judging all content-based but viewpoint-neutral trademark restrictions.[35]
[1] Matal v. Tam, 582 U.S. 218, 218 (2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id. at 247.
[6] Iancu v. Brunetti, 588 U.S. 388, 388 (2019).
[7] Id.
[8] Id. at 390.
[9] Id. at 399.
[10] Id. at 390.
[11] Vidal v. Elster, 602 U.S. 286, 286 (2024).
[12] Id.
[13] U.S. Trademark Application Serial No. 87/749,230 (filed Jan. 10, 2018).
[14] In re Elster, 26 F.4th 1328, 1330 (Fed. Cir. 2022).
[15] Vidal, 602 U.S. at 286
[16] 15 U.S.C.A. § 1052.
[17] Elster, 26 F.4th at 1330.
[18] Vidal, 602 U.S. at 286.
[19] Id.
[20] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 13:37 (5th ed. 2024).
[21] Id.
[22] Id.
[23] Vidal, 602 U.S. at 289.
[24] Id. at 286.
[25] Id. at 294.
[26] Id. at 295.
[27] Id. at 299.
[28] Vidal, 602 U.S. at 299.
[29] Id. at 301-02.
[30] Id. at 305.
[31] McCarthy, supra note 20.
[32] McCarthy, supra note 20.
[33] Id.
[34] Vidal, 602 U.S. at 307.
[35] Id. at 310.