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On June 13, 2024, the Supreme Court handed down its decision in Vidal v. Elster, a case that pitted trademark law against the First Amendment’s free speech protections. While the Court unanimously upheld the Patent and Trademark Office’s (PTO) refusal to register a contentious mark, the justices’ concurring opinions reveal sharp divisions over the proper framework for analyzing First Amendment challenges and the role of history in constitutional interpretation.

The Case: A “Small” Matter with Big Implications

At the heart of the case was Steve Elster’s attempt to register the trademark “Trump too small” for use on shirts and hats. If you’re wondering about the origin of this rather diminutive phrase, it harkens back to a memorable 2016 primary debate exchange between then-candidate Donald Trump and Sen. Marco Rubio.

The PTO refused registration under the Lanham Act’s “names clause,” which prohibits registering a trademark containing a living person’s name without their consent. This case marks the third in a recent trio of decisions, following Matal v. Tam and Iancu v. Brunetti, which struck down other Lanham Act restrictions on “disparaging” and “immoral” or “scandalous” marks as unconstitutional.

To Scrutinize or Not to Scrutinize: The Justices Weigh In

A threshold issue in the case was whether the names clause, as a content-based speech regulation, should face heightened scrutiny. In a plot twist that might shock First Amendment aficionados, all nine justices agreed it should not. Content-based restrictions on speech are presumptively unconstitutional and generally subject to strict scrutiny — requiring the government to show the law is narrowly tailored to achieve a compelling interest. Not so here.

Why the unanimous shoulder shrug to heightened scrutiny? Well, it turns out trademarks and the First Amendment have been coexisting peacefully for over two centuries without raising censorship concerns. As Justice Clarence Thomas put it, this long history suggests “heightened scrutiny need not always apply in this unique context.” Indeed, trademarks are inherently content-based. The whole point is to identify the source of goods based on the content of the mark.

Justice Sonia Sotomayor added another wrinkle. She pointed out that denying trademark registration doesn’t actually restrict speech. When the PTO refuses to register a mark under the names clause, it “does not prevent [the applicant] from using his mark in commerce or communicating any message incidental to the mark.” The applicant just doesn’t get the additional benefits of federal registration, such as nationwide priority and presumptions of validity. It’s like the government declining to give you a gold star for your controversial book report — you can still write it, you just don’t get extra credit.

The History and Tradition Tango: Justices Clash Over Interpretive Approach

Here’s where things get spicy. Thomas, writing for a five-justice majority, led us on a historical field trip. He delved into past trademark practices, essentially arguing, “[w]e’ve been doing it this way for ages, so it must be constitutional.”

But Justice Amy Coney Barrett did not appear to be a fan of this field trip. In her concurrence, she argued that the Court’s historical evidence was not as rock-solid as Thomas made it out to be. She even suggested that some early cases allowed famous living persons’ names to be trademarked without consent.

More fundamentally, Barrett questioned the wisdom of relying solely on historical practice to determine constitutionality. She argued that “tradition is not an end in itself” and in a particularly sharp rebuke, she wrote: “I fear that the Court uses it that way here.” Barrett pointed out the irony in the majority’s approach, noting that while it claims to avoid “judge-made tests,” it effectively creates a new one by making historical tradition dispositive.

A New Test Enters the Ring: Reasonableness in Light of Trademark’s Purpose

Instead of this historical focus, Barrett proposed evaluating content-based trademark restrictions based on whether they are “reasonable in light of the purpose of the trademark system.” It seems as if this proposal would ask: “Does this rule actually help trademarks do their job, or is it just making life difficult for creative entrepreneurs?” Under this framework, she concluded that the names clause is constitutional because it serves trademark law’s core purposes of facilitating source identification and protecting mark owners’ goodwill.

Sotomayor, joined by Justices Elena Kagan and Ketanji Brown Jackson, took the critique a step further. She argued that the history-focused approach was about as clear as mud to judges and litigants. In a particularly colorful analogy, she compared it to “entering a crowded cocktail party and looking over everyone’s heads to find your friends.” She expressed concern about the confusion this approach has caused in lower courts, citing as an example the difficulties courts have faced in applying the historical test from New York State Rifle & Pistol Association v. Bruen in Second Amendment cases.

The Takeaway: More Questions Than Answers

While Vidal v. Elster leaves the names clause intact, it highlights tensions between trademark law and free speech. It also provides new insight into the justices’ competing visions of constitutional interpretation and the role of history.

Even Thomas acknowledged the narrowness of the holding, conceding that not every content-based trademark restriction must find support in history and tradition. This admission, along with the concurring justices’ critiques, suggests that Barrett’s purpose-driven approach may provide a more reliable roadmap for Congress in regulating trademarks going forward.

At minimum, the case sets the stage for further battles over the use of history and tradition in constitutional cases. As for Steve Elster, he may not have gotten his trademark, but he certainly got the Court talking.