Vidal v. Elster — Lanham Act’s Bar on Registering Living Persons’ Names Without Consent Is Constitutional

Background

Steve Elster applied to register the trademark “TRUMP TOO SMALL” — a phrase that referenced a moment in the 2016 presidential debates — for use on shirts and other merchandise. The USPTO refused registration under Section 2(c) of the Lanham Act, which bars registration of marks that consist of or comprise the name of a living person without that person’s consent. Donald Trump had not consented to the use of his name in Elster’s mark.

Elster argued that the consent requirement violated the First Amendment. The Federal Circuit agreed, finding the restriction was viewpoint-based. The Supreme Court granted review in the context of its recent string of First Amendment trademark cases — Matal v. Tam (2017) and Iancu v. Brunetti (2019) — which had struck down other Lanham Act restrictions on content-based grounds.

The Court’s Holding

Justice Thomas, writing for the Court, held that Section 2(c)’s consent requirement is constitutional. Unlike the restrictions struck down in Tam and Brunetti, the living-persons provision does not discriminate based on viewpoint. It applies equally to all marks containing living persons’ names without their consent, regardless of whether the mark expresses approval, disapproval, admiration, or mockery. A mark saying “TRUMP IS GREAT” would be refused just as much as “TRUMP TOO SMALL” — the restriction turns on the subject (a living person’s name without consent), not the view expressed about that subject.

The Court drew on a long historical tradition of trademark law protecting individuals’ rights in their own names, finding this restriction consistent with longstanding content-based (but viewpoint-neutral) regulations of the trademark system. Such traditional regulations, even if they incidentally restrict speech, survive First Amendment scrutiny when they serve legitimate interests in protecting individuals’ identities.

Key Takeaways

• The Lanham Act’s bar on registering marks containing a living person’s name without consent is constitutional — it is content-based but viewpoint-neutral and historically grounded.
• Not all content-based trademark restrictions are unconstitutional after Tam and Brunetti; viewpoint-neutrality and historical tradition are critical factors.
• Anyone wishing to trademark a phrase containing a living public figure’s name must obtain that person’s consent or forgo federal trademark registration.
• The decision limits the reach of Tam and Brunetti without overruling them — the First Amendment analysis in trademark law continues to evolve.

Why It Matters

Political merchandise is big business, and thousands of entrepreneurs sell products bearing the names and likenesses of politicians, celebrities, and public figures. This decision confirms that federal trademark registration for such products requires the subject’s consent — a meaningful practical hurdle when the subject is a political opponent or an unwilling celebrity.

More broadly, Vidal v. Elster draws an important constitutional distinction between viewpoint-based and content-based (but viewpoint-neutral) trademark restrictions. The former are per se unconstitutional under Tam and Brunetti. The latter may survive if supported by historical tradition and not motivated by hostility to a particular viewpoint. For trademark lawyers, the case provides a framework for predicting which Lanham Act restrictions remain vulnerable to First Amendment challenge.