Section 2(c), 15 U.S.C. § 1052(c), bars the registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.” 

Steve Elster filed a trademark application to register TRUMP TOO SMALL for “shirts,” which the USPTO refused under the so-called names clause of Section 2(c). The TTAB affirmance of the refusal was reversed by the Federal Circuit because, as applied to a public figure like former-President Donald J. Trump, the refusal under Section 2(c) was “viewpoint discrimination” that violated the freedom of speech clause of the First Amendment, citing Matal v. Tam, 582 U.S. 218 (2017) (disparaging marks such as THE SLANTS) and Iancu v. Brunetti, 588 U.S. 388 (2019) (scandalous marks such as FUCT).

In Vidal v. Elster, No. 22-704, 602 U.S. ___ (2024), the U.S. Supreme Court held that the names clause turns on whether the mark uses a person's name, so “[n]o matter the message a registrant wants to convey, the names clause prohibits marks that use another person's name without consent.” Brunetti and Tam were distinguished because they were viewpoint-based rather than viewpoint-neutral. 

The Court noted that “[r]estrictions on trademarking names . . . have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another's trademark.” And there is “no First Amendment right to piggyback off the goodwill another entity has built in its name.” 

            Recognizing a person's ownership over his name, the common law restricted the trademarking of names.

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The names clause thus protects “the reputation of the named individual” by preventing another person from using his name.

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            Our decision today is narrow. 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 his concurring opinion, Justice Kavanaugh, joined by Chief Justice Roberts, agreed that there was a “long history of restricting the use of another's name in a trademark” but posited that “a viewpoint-neutral, content-based trademark restriction might well be constitutional even absent such a historical pedigree.” 

Justice Barrett's concurring-in-part opinion argued that this history was not determinative, and that content-based criteria for trademark registration are constitutional “so long as they reasonably relate to the preservation of the markowner's goodwill and the prevention of consumer confusion.” She concluded that the names clause passes muster because “[a] trademark that includes another living person's name without her consent has the obvious potential to create source confusion.”

Justice Sotomayor's concurring opinion rejected “this kind of history-and-tradition test to a free-speech challenge,” and instead relied on First Amendment precedent. She concluded that “the names clause is constitutional because it is a viewpoint-neutral, reasonable limitation on a trademark's registration.”

Professor Crouch noted that "the splintered reasoning leaves uncertainty about the proper framework for evaluating provisions without such historical pedigree."

The TTABlog suggested that "nothing in these rulings prohibits Elster from continuing to use the phrase to market his shirts."  

The attorneys at Thomas P. Howard, LLC are experienced in trademarks nationwide including in Colorado.