July 2024 The US Supreme Court has recently overturned a decision of the High Court that finds certain trade mark restrictions contravene First Amendment rights of free speech.
This ruling upheld the decision that trade mark registrations cannot be the name of a living person without their permission, and that this revocation is not unconstitutional. However, the Justices could not unanimously agree on why this ruling has been upheld.
In 2018, an application to register the mark “TRUMP TOO SMALL” was filed in respect of shirts and hats. It appears that the mark was intended to criticise the then President Donald Trump and was inspired by an exchange during a 2016 presidential Republican Primary debate.
Section 2(c) of the US Trade Mark Act, the Lanham Act, prohibits the registration of the name of any living person without their permission, i.e. the “names clause”, and as a result, the trade mark application was refused.
The applicant appealed this decision to the Trademark Trial and Appeal Board (TTAB), arguing that Section 2(c) violated the first amendment to the US Constitution, being a “viewpoint-based” restriction of speech. This argument follows other decisions of the Supreme Court, including Matal v Tam and Lancu v Brunetti, which found that trade mark applications cannot be refused for being disparaging or containing immoral or scandalous matter as they offended the First Amendment, being restrictions on speech that reflected a single viewpoint only, namely they were viewpoint-based restrictions.
The TTAB was unconvinced by this argument, holding that the “names clause” did not violate the First Amendment, and the case was further appealed. The Federal Circuit overturned the TTAB decision, holding that Section 2(c) did indeed violate the First Amendment, being a viewpoint-based restriction on speech.
The matter was then considered by the Supreme Court, which confirmed that the “names clause” did not violate the First Amendment as it prevents the registration of the name of any living person, irrespective of who the person is, and whether the mark is complementary, critical or neutral with respect to that person. It is therefore not a viewpoint-based restriction.
Justice Thomas, who wrote the main decision said:-
No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent. It does not matter ‘whether the use of [the] name is flattering, critical, or neutral.’ The government is thus not singling out a trademark ‘based on the specific motivating ideology or the opinion or perspective of the speaker.
In contrast the Court found that the names clause limitation was to prevent others from “piggyback[ing] off the goodwill of another entity that has built its name”, and so protects the goodwill and reputation of the named person.
This finding distinguishes this case from the Tam and Brunetti cases, where the Supreme Court did find that the limitation was viewpoint-based, and hence unconstitutional.
The Court also found that the names clause was still a content-based restriction on speech, which also carried a presumption that that the restriction will be unconstitutional. However, the Justices concluded that here, the unconstitutionality did not apply in this case, with Justice Thomas saying:-
“history demonstrates that restrictions on trademarks have always turned on a mark’s content and have existed harmoniously alongside the First Amendment from the beginning. That relationship suggests that heightened scrutiny need not always apply in this unique context.”
Despite this agreement, the Justices could not agree on the reasons why the names clause did not violate the First Amendment, with an alternative reasoning being provided by different Justices. The majority view the reason for the exclusion stems from the concept that a person should have exclusive ownership in their name, noting that:-
“the tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition”.
In contrast, other Justices considered that clause was permissible “as long as they are reasonable in light of the trademark system’s purpose of facilitating source identification
Yet further Justices provided related reasoning suggesting:-
“First ask whether the challenged provision targets particular view taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trade mark system.”
As source identification is the purpose of a trade mark, the names clause is required to enable the achievement of this purpose.
In view of the Justices inability to reach consensus on the reasoning for the decision, the judgement does not provide guidance on other matters of constitutionality that may arise in trade mark law, or indeed any other law relating to matters that are viewpoint-neutral but content-based restrictions to speech.
Nevertheless, this Decision upholds limitations to trade mark registrations following a number of Decisions mentioned above, in which limitations to trade mark registrations were held unconstitutional as viewpoint-based restrictions. It therefore acts as a reminder that there are some limitations of terms that can be registered as a trade mark in the US.
