The Volokh Conspiracy

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Free Speech

S. Ct. Will Decide "TRUMP TOO SMALL" Trademark / First Amendment Case

The question: Does the First Amendment allow content-based but viewpoint-neutral restrictions on which trademarks may be registered—here, a restriction on marks that "[c]onsist[] of or comprise[] a name ... identifying a particular living individual except by his written consent"?


Federal trademark law allows for the registration of trademarks, which provides certain benefits:

Registration on the principal register (1) "serves as 'constructive notice of the registrant's claim of ownership' of the mark"; (2) "is 'prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate'"; and (3) can make a mark "'incontestable'" once a mark has been registered for five years." Registration also enables the trademark holder "to stop the importation into the United States of articles bearing an infringing mark."

Unregistered marks can still be used by their owner, and indeed can be protected from infringing uses—but trademark registration helps provide stronger protection.

In Matal v. Tam (the "SLANTS" case) and Iancu v. Brunetti (the "FUCT" case), the Court struck down certain limits on trademark registration that the Court viewed as viewpoint-based: the ban on marks that "disparage … persons, living or dead, institutions, beliefs, or national symbols" (Matal) and the ban on "immoral or scandalous" marks (Iancu). But the Court left open the question whether viewpoint-neutral but content-based limits on registration are constitutional.

Vidal v. Elster, which the Supreme Court agreed to hear today, deals with that very question. The federal trademark statute excludes from registration any marks

[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

The parties agree that this is viewpoint-neutral, but the Federal Circuit held that this doesn't save the provision. The provision should be treated, the court held, as a speech restriction—though, again, it doesn't actually limit the use of the trademark, but just limits the special registration benefits offered to a trademark owner—and it can't pass First Amendment scrutiny, at least as to public officials: To the extent the provision aims to protect people's rights of privacy or publicity, those rights don't sufficiently apply to government officials (at least in the absence of plausible claims of false endorsement or unfair competition).

The government, on the other hand, argues that the trademark registration scheme should be treated like government subsidies, which can generally be distributed in content-based but reasonable and viewpoint-neutral ways. (For instance, the charitable tax exemption can be limited to groups that don't use the exemption to advocate for or against candidates, because the exemption is a subsidy and the no-electioneering condition is viewed as reasonable and viewpoint-neutral.) The Court will presumably hear the case this Fall, and will decide it by June 2024.