NOTICE: This opinion is subject to
formal revision before publication in the United States Reports.
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SUPREME COURT OF THE UNITED STATES
_________________
No. 22–704
_________________
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, UNITED STATES
PATENT AND TRADEMARK OFFICE, PETITIONER
v. STEVE ELSTER
on writ of certiorari to the united states
court of appeals for the federal circuit
[June 13, 2024]
Justice Thomas announced the judgment of the
Court and delivered the opinion of the Court with respect to Parts
I, II, and IV, and an opinion with respect to Part III, in which
Justice Alito and Justice Gorsuch join.[
1]*
Steve Elster sought to register the trademark
“Trump too small.” But, the Patent and Trademark Office (PTO)
refused to register the mark because the Lanham Act prohibits
registration of a trademark that “[c]onsists of or comprises a name
. . . identifying a particular living individual except
by his written consent.” 60Stat. 428, 15 U. S. C.
§1052(c). Elster contends that this prohibition violates his First
Amendment right to free speech. We hold that it does not.
I
A trademark is “a symbol or a device to
distinguish the goods or property made or sold by the person whose
mark it is, to the exclusion of use by all other persons.”
Trade-Mark Cases, 100 U. S. 82, 92 (1879); see also
§1127. As we have explained, “[t]he principle underlying trademark
protection is that distinctive marks—words, names, symbols, and the
like—can help distinguish a particular artisan’s goods from those
of others.”
B&B Hardware, Inc. v.
Hargis Industries,
Inc., 575 U. S. 138, 142 (2015). So “[o]ne who first uses
a distinct mark in commerce thus acquires rights to that mark,”
which “include preventing others from using the mark.”
Ibid.
Trademark rights are primarily a matter of state
law, but an owner can obtain important rights through federal
registration. The Lanham Act creates a federal
trademark-registration system administered by the PTO. Federal
“[r]egistration of a mark is not mandatory,” and “[t]he owner of an
unregistered mark may still use it in commerce and enforce it
against infringers.”
Iancu v.
Brunetti, 588
U. S. 388, 391 (2019). Federal registration, however, “confers
important legal rights and benefits.”
B&B Hardware, 575
U. S., at 142 (internal quotation marks omitted). For example,
a registrant may rely on registration in litigation as prima facie
evidence of his exclusive right to use the mark. §1115(a). And,
registration provides nationwide constructive notice of the
registrant’s claim of ownership of the mark. §1072.
Only marks that meet certain criteria are
federally registerable. Among other criteria, the Lanham Act
contains what we will call the “names clause”—a prohibition on the
registration of a mark that “[c]onsists of or comprises a name
. . . identifying a particular living individual except
by his written consent.” §1052(c). The names clause excludes from
registration “not only full names but also surnames, shortened
names, and nicknames, so long as the name does in fact identify a
particular living individual.” 2 J. McCarthy, Trademarks and Unfair
Competition §13:37, p. 31 (5th ed. 2024) (McCarthy).
Steve Elster sought to register the trademark
“Trump too small,” accompanied by an illustration of a hand
gesture, to use on shirts and hats. The mark draws on an exchange
between then-candidate Donald Trump and Senator Marco Rubio during
a 2016 Presidential primary debate.
The PTO examiner refused registration under the
names clause because the mark used President Trump’s name without
his consent. The Trademark Trial and Appeal Board affirmed, and it
also rejected Elster’s argument that the names clause violates his
First Amendment right to free speech.[
2] The Federal Circuit reversed, holding that the names
clause violated the First Amendment.
In re Elster, 26
F. 4th 1328 (CA Fed. 2022). The court first concluded that the
names clause is a viewpoint-neutral, content-based restriction on
speech subject to at least intermediate scrutiny. See
id.,
at 1331, 1333–1334. It next concluded that the Government could not
satisfy even intermediate scrutiny because the names clause does
not advance any substantial governmental interest. See
id.,
at 1339.
We granted certiorari to resolve whether the
Lanham Act’s names clause violates the First Amendment. 598
U. S. ___ (2023).
II
A
The First Amendment provides that “Congress
shall make no law . . . abridging the freedom of speech.”
In general, we have held that the First Amendment prohibits the
Government from restricting or burdening “expression because of its
message, its ideas, its subject matter, or its content.”
Ashcroft v.
American Civil Liberties Union, 535
U. S. 564, 573 (2002) (internal quotation marks omitted).
“When enforcing this prohibition, our precedents distinguish
between content-based and content-neutral regulations of speech.”
National Institute of Family and Life Advocates v.
Becerra, 585 U. S. 755, 766 (2018). A content-based
regulation “target[s] speech based on its communicative content,”
restricting discussion of a subject matter or topic.
Reed v.
Town of Gilbert, 576 U. S. 155, 163 (2015). “As a
general matter,” a content-based regulation is
“ ‘presumptively unconstitutional and may be justified only if
the government proves that [it is] narrowly tailored to serve
compelling state interests.’ ”
National Institute of Family
and Life Advocates, 585 U. S., at 766. Our precedents
distinguish further a particularly “egregious form of content
discrimination”—viewpoint discrimination.
Rosenberger v.
Rector and Visitors of Univ. of Va., 515 U. S. 819, 829
(1995). A viewpoint-based regulation targets not merely a subject
matter, “but particular views taken by speakers on a subject.”
Ibid. It is also generally subject to heightened scrutiny,
though viewpoint discrimination’s “violation of the First Amendment
is . . . more blatant.”
Ibid. Because our
precedents dictate that these distinctions inform our assessment
under the First Amendment, we start with them to evaluate the names
clause.
In the trademark context, we have twice
concluded that trademark restrictions that discriminate based on
viewpoint violate the First Amendment. In
Matal v.
Tam, 582 U. S. 218, 223 (2017), we held that the Lanham
Act’s bar on disparaging trademarks violated the First Amendment.
All Justices in
Tam agreed that this bar was viewpoint based
because it prohibited trademarks based only on one viewpoint:
“[g]iving offense.”
Id., at 243 (plurality opinion); see
also
id., at 248–249 (Kennedy, J., concurring in part and
concurring in judgment). And, in
Brunetti, we held that the
Lanham Act’s bar on trademarks containing immoral or scandalous
matter likewise violated the First Amendment. 588 U. S., at
390. We concluded that the bar was viewpoint based because it
prohibited trademarks based only on one viewpoint, immoral or
scandalous matter, while permitting trademarks based on other
viewpoints.
Id., at 393–394.
The names clause does not facially discriminate
against any viewpoint. 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.” 2 McCarthy §13:37.50. The
Government is thus not singling out a trademark “based on the
specific motivating ideology or the opinion or perspective of the
speaker.”
Reed, 576 U. S., at 168 (internal quotation
marks omitted); accord,
Brunetti, 588 U. S., at 394
(explaining that a viewpoint-based trademark law “distinguishes
between two opposed sets of ideas”).
Elster suggests that the names clause verges on
viewpoint discrimination in practice. According to Elster, it is
easier to obtain consent for a trademark that flatters a person
rather than mocks him. This Court has found that a law can
discriminate based on viewpoint in its practical operation. See
Sorrell v.
IMS Health Inc., 564 U. S. 552, 565
(2011);
R. A. V. v.
St. Paul, 505
U. S. 377, 391 (1992). But, here, there are many reasons why a
person may be unable to secure another’s consent to register a
trademark bearing his name. Even when the trademark’s message is
neutral or complimentary, a person may withhold consent to avoid
any association with the goods, or to prevent his name from being
exploited for another’s gain.[
3]
Although the names clause is not viewpoint
based, it is content based. As we have explained, a restriction on
speech is content based if the “law applies to particular speech
because of the topic discussed or the idea or message expressed.”
Reed, 576 U. S., at 163. The names clause turns on the
content of the proposed trademark—whether it contains a person’s
name. If the trademark does contain a person’s name, and the
registrant lacks that person’s consent, then the names clause
prohibits registration. Because trademarks containing names “are
treated differently from [trademarks] conveying other types of
ideas,” the names clause is content based.
Id., at 164.
We thus confront a situation we did not address
in
Tam or
Brunetti. In
Tam, we were careful to
“leave open” the framework “for deciding free speech challenges to
provisions of the Lanham Act.” 582 U. S., at 245, n. 17
(plurality opinion); see
id., at 244, n. 16. And, in
Brunetti, we declined to “say anything about how to evaluate
viewpoint-neutral restrictions on trademark registration.” 588
U. S., at 398, n.
B
Because we must now consider for the first
time the constitutionality of a content-based—but
viewpoint-neutral—trademark restriction, we begin by addressing how
the nature of trademark law informs the applicable constitutional
scrutiny. Although a content-based regulation of speech is
presumptively unconstitutional as a general matter, we have not
decided whether heightened scrutiny extends to a viewpoint-neutral
trademark restriction. Several features of trademark counsel
against a
per se rule of applying heightened scrutiny
to viewpoint-neutral, but content-based trademark regulations.
Most importantly, trademark rights have always
coexisted with the First Amendment, despite the fact that trademark
protection necessarily requires content-based distinctions. See
generally
Tam, 582 U. S., at 223–224;
Trade-Mark
Cases, 100 U. S., at 92. Trademark rights “ha[ve] been
long recognized by the common law and the chancery courts of
England and of this country, and by the statutes of some of the
States,” and that protection continues today.
Id., at 92. As
we all agree, this “[h]istory informs the understanding that
content-based distinctions are an intrinsic feature of trademarks.”
Post, at 6 (Sotomayor, J., concurring in judgment); accord,
post, at 2–6 (Barrett, J., concurring in part). And, for the
duration of that history, the inherently content-based nature of
trademark law has never been a cause for constitutional
concern.
Our country has recognized trademark rights
since the founding. See B. Pattishall, The Constitutional
Foundations of American Trademark Law, 78 Trademark Rep. 456,
457–459 (1988). At the outset, there were few recorded decisions,
and the law developed slowly. Much of early American trademark law
“was lifted essentially from that of England.”
Id., at 457.
The protection of trademarks under English law was an inherently
content-based endeavor. For example, an early English law made it
“lawful to and for every Trader, Dealer and Weaver of Linen
Manufacture, to weave his Name, or fix some known Mark in any Piece
of Linen Manufacture by him made.” 13 Geo. I, c. 26, p. 458
(1726). And, a person could be liable for fraud if he sold a
product under another person’s mark. See,
e.
g.,
id., at 459;
Singleton v.
Bolton, 3 Dougl.
293, 99 Eng. Rep. 661 (K. B. 1783);
Southern v.
How,
Pop. 143, 144, 79 Eng. Rep. 1243, 1244 (K. B. 1618) (mentioning
that an “action did well lie” if a clothier “used the same mark” as
another); J. Baker, Sources of English Legal History: Private Law
to 1750, p. 675 (2d ed. 2010) (discussing
J. G. v.
Samford, also known as
Sandforth’s Case, which held
in 1584 that an action could lie when a clothier “used another
[clothier’s] mark”); see also G. Jacob, A New-Law Dictionary (1729)
(defining “Mark to Goods” as “what ascertains the Property or
Goodness thereof . . . And if one Man shall use the
Mark of another, to the Intent to do him Damage, Action upon
the Case lieth”). So, the content of the mark (whether it was the
same as another person’s) triggered the restriction.
Although there was an early push for federal
legislation to protect trademarks, no such law was enacted during
our country’s infancy. See B. Paster, Trademarks—Their Early
History, 59 Trademark Rep. 551, 565–566 (1969); see also F.
Schechter, Historical Foundations of the Law Relating to
Trade-Marks 131 (1925) (Schechter). Instead, trademark law fell
largely within “the province of the States” for the 18th and most
of the 19th century.
Tam, 582 U. S., at 224. For
example, Massachusetts passed a private bill incorporating a cotton
corporation on the condition that it affix a label to its goods
“with the seal of the said Corporation.” 1 Mass. Private and
Special Laws, 1789, ch. 43, §5, p. 226 (1805). The law also
prevented others from “us[ing] a like seal or label” by subjecting
them to treble damages.
Ibid. To be sure, for most of our
first century, most commerce was local and most consumers therefore
knew the source of the goods they purchased. See R. Bone, Hunting
Goodwill: A History of the Concept of Goodwill in Trademark Law, 86
B. U. L. Rev. 547, 575 (2006). “[E]ven as late as 1860
the term ‘trademark’ really denoted only the name of the
manufacturer.” B. Pattishall, Two Hundred Years of American
Trademark Law, 68 Trademark Rep. 121, 128 (1978). There was
nonetheless “a certain amount of litigation in the state courts in
the early nineteenth century,” though it went unrecorded. Schechter
133.
The “first reported American decision that may
be described as a trademark case” involved a dispute over the
content of a mark—and in particular, the use of a person’s name.
Pattishall, Constitutional Foundations, at 460. In
Thomson
v.
Winchester, 36 Mass. 214, 216 (1837), Samuel Thomson—who
sold a medicine under the name “Thomsonian Medicines”—brought suit
against another Massachusetts druggist who sold an allegedly
inferior product under the same name. The court held that the
druggist could be liable for fraud if he passed the medicine off as
that of Thomson.
Ibid.
In a similar vein, the first reported trademark
case in federal court revolved around a trademark’s content.
Justice Story, sitting as Circuit Justice, granted an injunction to
prohibit a seller of spools from infringing on the
plaintiff ’s trademark of “Taylor’s Persian Thread.”
Taylor v.
Carpenter, 3 Story 458 (D. Mass. 1844).
Justice Story explained that, by using the trademark, the seller
“imitated . . . both descriptions of spools and labels,
red and black, of the plaintiffs,” and that the principles
prohibiting such infringement were at that time “very familiar to
the profession” and not “susceptible of any judicial doubt.”
Id., at 464.
Recorded trademark law began to take off in the
last decades of the 19th century—after the ratification of the
Fourteenth Amendment in 1868—and its established content-based
nature continued. See Schechter 134; Pattishall, Two Hundred Years,
at 133. American commerce became more national in character, and,
perhaps because of this shift, Congress enacted the first federal
trademark law in 1870. Although States retained their important
role, “Congress stepped in to provide a degree of national
uniformity” for trademark protection.
Tam, 582 U. S.,
at 224 (citing Act of July 8, 1870, §§77–84, 16Stat.
210–212).[
4]
This first law contained prohibitions on what
could be protected as a trademark. For example, the law would not
protect a trademark that contained “merely the name of a person
. . . only, unaccompanied by a mark sufficient to
distinguish it from the same name when used by other persons.”
Id., at 211. It thus restricted a trademark based upon its
content (
i.
e., whether it contained more than a
name). As trademark disputes increased, courts continued to assess
trademarks based on their content. For example, this Court’s first
trademark decision explained that a trademark cannot consist of a
purely geographical name, rejecting an attempt by one of several
coal producers in Pennsylvania’s Lackawanna Valley to trademark
“Lackawanna coal.”
Canal Co. v.
Clark, 13 Wall. 311,
321 (1872). Throughout its development, trademark law has required
content-based distinctions.
That did not change when Congress enacted the
Lanham Act in 1946. The Act’s comprehensive system for federal
registration of trademarks continues to distinguish based on a
mark’s content. See Restatement (Third) of Unfair Competition §9,
Comment
e (1993) (Restatement) (“The Lanham Act is generally
declarative of existing law, incorporating the principal features
of common law trademark protection”). The Act defines a trademark
to include “any word, name, symbol, or device, or any combination
thereof ” that a person uses “to identify and distinguish his
or her goods . . . from those manufactured or sold by
others and to indicate the source of the goods.” §1127. When the
Government defines what may be registered as a trademark, it
necessarily decides that some words or images cannot be used in a
mark. To take one example, the Lanham Act bars the registration of
“a mark which so resembles [another’s] mark . . . as to
be likely . . . to cause confusion, or to cause mistake,
or to deceive.” §1052(d). It is impossible to determine whether one
trademark is the same as (or confusingly similar to) another
without looking at the content of the two marks.
This history, reflected in the Lanham Act still
today, demonstrates that restrictions on trademarks have always
turned on a mark’s content. But, despite its content-based nature,
trademark law has existed alongside the First Amendment from the
beginning. That longstanding, harmonious relationship suggests that
heightened scrutiny need not always apply in this unique
context.
The content-based nature of trademark protection
is compelled by the historical rationales of trademark law. A
trademark has generally served two functions: “indicating ownership
of the goods to which it [is] affixed” and “indicating the source
or origin of manufacture.” Schechter 122. Indicating ownership of a
good was needed in part to “fi[x] responsibility for defective
merchandise.” Restatement §9, Comment
b. And, indicating the
source of the good helped “prospective purchasers . . .
make their selections based upon the reputation, not merely of the
immediate vendor, but also of the manufacturer.”
Ibid. Both
goals thus reflect that trademarks developed historically to
identify for consumers who sold the goods (the vendor) and who made
the goods (the manufacturer). See
ibid. In that vein, a
basic function of trademark law has always been to “prohibi[t]
confusion as to the source of good or services.” Pattishall,
Constitutional Foundations, at 458; see also
Jack Daniel’s
Properties, Inc. v.
VIP Products LLC, 599 U. S.
140, 147 (2023) (“Confusion as to source is the bête noire of
trademark law”). Indicating ownership and the manufacturing source
touch on the content of the mark—
i.
e., from whom the
product came. And, as we have explained, policing trademarks so as
to prevent confusion over the source of goods requires looking to
the mark’s content.
Supra, at 10.
Because of the uniquely content-based nature of
trademark regulation and the longstanding coexistence of trademark
regulation with the First Amendment, we need not evaluate a solely
content-based restriction on trademark registration under
heightened scrutiny. See
R. A. V., 505 U. S.,
at 387 (“Even the prohibition against content discrimination that
we assert the First Amendment requires is not absolute”);
Jack
Daniel’s, 599 U. S., at 159 (explaining that, in some
circumstances, “trademark law [can] prevai[l] over the First
Amendment” (internal quotation marks omitted));
post, at 6
(opinion of Sotomayor, J.);
post, at 6–7 (opinion of
Barrett, J.).
C
We have acknowledged that trademark rights and
restrictions can “play well with the First Amendment.”
Jack
Daniel’s, 599 U. S., at 159 (internal quotation marks
omitted). In this case, we do not delineate an exhaustive framework
for when a content-based trademark restriction passes muster under
the First Amendment. But, in evaluating a solely content-based
trademark restriction, we can consider its history and tradition,
as we have done before when considering the scope of the First
Amendment. See
City of Austin v.
Reagan Nat. Advertising
of Austin, LLC, 596 U. S. 61, 75 (2022);
id., at
101 (Thomas, J., dissenting);
R. A. V., 505
U. S., at 382–383;
Roth v.
United States, 354
U. S. 476, 482–483 (1957).
The Lanham Act’s names clause has deep roots in
our legal tradition. Our courts have long recognized that
trademarks containing names may be restricted. And, these name
restrictions served established principles. This history and
tradition is sufficient to conclude that the names clause—a
content-based, but viewpoint-neutral, trademark restriction—is
compatible with the First Amendment. We need look no further in
this case.
1
Restrictions on trademarking names have a long
history. See generally 2 McCarthy §13:5. Such restrictions 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. As the Court has explained,
“[a] man’s name is his own property, and he has the same right to
its use and enjoyment as he has to that of any other species of
property.”
Brown Chemical Co. v.
Meyer, 139
U. S. 540, 544 (1891). It is therefore “an elementary
principle that every man is entitled to the use of his own name in
his own business.” F. Treadway, Personal Trade-Names, 6 Yale L. J.
141, 143–144 (1897) (Treadway); see also A. Greeley, Foreign Patent
and Trademark Laws §138, p. 135 (1899) (“The right of any one
to place his own name on goods sold by him is recognized as a
natural right and cannot be interfered with”). “The notion that
people should be able to use their own name to identify their goods
or business is deeply rooted in American mores.” B. Pattishall, D.
Hilliard, & J. Welch, Trademarks and Unfair Competition §2.06
(2001).
Recognizing a person’s ownership over his name,
the common law restricted the trademarking of names. It prevented a
person from trademarking any name—even his own—by itself. In “the
early years of trademark law,” courts recognized that “ there
can be no trade-mark in the name of a person, because
. . . every person has the right to use his own name for
the purposes of trade.” 2 McCarthy §13:5 (internal quotation marks
omitted); see also Restatement §14, Comment
e (“[A]t early
common law, the recognition of an unencumbered right to use one’s
name in trade effectively precluded the existence of trademark or
trade name rights in personal names”); W. Browne, Law of
Trade-Marks §206, p. 219 (2d ed. 1885) (“The rule is, that a
man cannot turn his mere name into a trade-mark”);
McLean v.
Fleming, 96 U. S. 245, 252 (1878) (explaining that a
person cannot obtain “the exclusive use of a name, merely as such,
without more”).
The common law did, however, allow a person to
obtain a trademark
containing his own name—with a caveat: A
person could not use a mark containing his name to the exclusion of
a person with the
same name. “A corollary of the right to
use one’s own name and identity in trade is the right to stop
others from doing so—at least those who don’t share the same name.”
J. Rothman, Navigating the Identity Thicket, 135 Harv. L. Rev.
1271, 1306 (2022); see also Treadway 143–144. In other words, a
person’s right to his name cannot be exclusive as to other people
bearing the same name: John Smith cannot acquire a trademark that
prohibits other John Smiths from using their own names. See
McLean, 96 U. S., at 252 (“[H]e cannot have such a
right, even in his own name, as against another person of the same
name, unless such other person uses a form of stamp or label so
like that used by the complaining party as to represent that the
goods of the former are of the latter’s manufacture”); accord,
Brown Chemical, 139 U. S., at 542;
MeNeely v.
MeNeely, 62 N. Y. 427, 432 (Ct. App. 1875); see also
Treadway 143; accord,
post, at 10 (opinion of Barrett, J.).
Consider the case of John L. Faber and John H. Faber, two men who
independently manufactured lead pencils near Nuremberg, Germany.
Both men stamped the pencils they manufactured with their shared
surname. After recognizing that each man “had the right to put his
own name on his own pencils,” the New York Supreme Court declined
to allow one man to effectively trademark the other man’s name.
Faber v.
Faber, 3 Abb. Pr. (N. S.) 115, 116
(1867).
We see no evidence that the common law afforded
protection to a person seeking a trademark of another living
person’s name. To the contrary, English courts recognized that
selling a product under another person’s name could be actionable
fraud. See,
e.
g.,
Singleton, 3 Dougl. 293, 99
Eng. Rep. 661;
Croft v.
Day, 7 Beav. 84, 88, 49 Eng.
Rep. 994, 996 (1843) (“[N]o man has a right to sell his goods as
the goods of another”). This recognition carried over to our
country. See
McLean, 96 U. S., at 252 (“[I]t is
doubtless correct to say that a person may have a right in his own
name as a trade-mark as against a trader or dealer of a different
name”); see also
Faber, 3 Abb. Pr. (N. S.), at 116. Even in
the absence of fraud, it would be difficult, if not impossible, to
square such a right to trademark another person’s name with our
established understanding that “[a] person may have a right in his
own name as a trade-mark, as against a person of a different name.”
Gilman v.
Hunnewell, 122 Mass. 139, 148 (1877); see
also
Thaddeus Davids Co. v.
Davids Mfg. Co., 233
U. S. 461, 472 (1914) (highlighting persons’ “right to use
their own name in trade”);
Faber, 3 Abb. Pr. (N. S.), at 116
(“[T]he maker had the right to put his own name on his own
pencils”). Relatedly, one could contract for the use of another
person’s name in his business. See,
e.
g.,
McLean, 96 U. S., at 249 (explaining that a “physician
whose name the pills bear . . . sold the right to use the
same” to another); see also
L. E. Waterman Co. v.
Modern
Pen Co., 235 U. S. 88, 96 (1914);
Meriden Britannia
Co. v.
Parker, 39 Conn. 450, 453 (1872) (“[T]hey made a
contract with the petitioners, by which, and by subsequent
contracts, the petitioners acquired the right . . . to
manufacture and sell plated spoons and forks with the name ‘Rogers’
stamped thereon as a component part of a trade mark”). Such
contracts would make little sense if one could use another living
person’s name in business at will. The common-law approach to
trademarking names thus protected only a person’s right to use his
own name.
This common-law understanding carried over into
federal statutory law. The first federal trademark law contained a
requirement that a trademark contain more than merely a name. See
Act of July 8, 1870, §79, 16Stat. 211. That requirement remains
largely intact. See §1052(e)(4) (prohibiting registration of a
trademark if it “is primarily merely a surname”). A few decades
later, federal trademark law emphasized “ ‘[t]hat nothing
herein shall prevent the registration of a trade-mark otherwise
registerable because of its being the name
of the
applicant.’ ” Act of Feb. 18, 1911, ch. 113, 36Stat. 918
(emphasis added). And, the Lanham Act later “incorporat[ed] the
principal features of common law trademark protection,” thereby
“declar[ing] . . . existing law” rather than writing
trademark law from scratch. Restatement §9, Comment
e; see
also W. Derenberg, Trade-Mark Protection and Unfair Trade 22 (1936)
(explaining that the “function [of federal trademark law] is
essentially an evidential one, reflecting the underlying common law
trade-mark right with the existence of which it rises and falls”).
It is thus unsurprising that the Lanham Act included the names
clause, prohibiting the registration of a mark containing “a name
. . . identifying a particular living individual except
by his written consent.” §1052(c). The names clause reflects the
common law’s careful treatment of names when it comes to
trademarks.
The restriction on trademarking names also
reflects trademark law’s historical rationale of identifying the
source of goods. See
Hanover Star Milling Co. v.
Metcalf, 240 U. S. 403, 412 (1916) (“The primary and
proper function of a trade-mark is to identify the origin or
ownership of the article to which it is affixed”); accord,
post, at 8 (opinion of Barrett, J.). Trademark protection
ensures that consumers know the source of a product and can thus
evaluate it based upon the manufacturer’s reputation and goodwill.
See Restatement §9, Comment
b; see also
Powell v.
Birmingham Vinegar Brewery Co., 13 Rep. Pat. Cas. 235, 250
(Ct. App. 1896) (Lindley, L. J.) (“His mark, as used by him,
has given a reputation to his goods. His trade depends greatly on
such reputation. His mark sells his goods”). By barring a person
from using another’s name, the names clause reflects the
traditional rationale of ensuring that consumers make no mistake
about who is responsible for a product. See also
Hanover Star
Milling Co., 240 U. S., at 412–413 (“The essence of the
wrong [for trademark infringement] consists in the sale of the
goods of one manufacturer or vendor for those of another”).
Moreover, the names clause respects the
established connection between a trademark and its protection of
the mark- holder’s reputation. We have long recognized that a
trademark protects the markholder’s reputation. See
McLean,
96 U. S., at 254 (explaining that a trademark “enable[s a
mark-holder] to secure such profits as result from his reputation
for skill, industry, and fidelity”); see also
Hanover Star
Milling Co., 240 U. S., at 412–413, 414;
Celluloid Mfg.
Co. v.
Cellonite Mfg. Co., 32 F. 94, 97 (CC NJ 1887)
(Bradley, J.). This protection reflects that a mark may “acquir[e]
value” from a person’s “expenditure of labor, skill, and money.”
San Francisco Arts & Athletics, Inc. v.
United States
Olympic Comm., 483 U. S. 522, 532 (1987) (internal
quotation marks omitted); accord,
McLean, 96 U. S., at
251. Accordingly, when a person uses another’s mark, “the owner is
robbed of the fruits of the reputation that he had successfully
labored to earn.”
Amoskeag Mfg. Co. v.
Spear &
Ripley, 2 Sandf. 599, 606 (NY Super. Ct. 1849). A person’s
trademark is “his authentic seal,” and “[i]f another uses it, he
borrows the owner’s reputation, whose quality no longer lies within
his own control.”
Yale Elec. Corp. v.
Robertson, 26
F. 2d 972, 974 (CA2 1928) (Hand, J.). “This is an injury, even
though the borrower does not tarnish it, or divert any sales by its
use; for a reputation, like a face, is the symbol of its possessor
and creator, and another can use it only as a mask.”
Ibid.
This connection between a trademark and
reputation is even stronger when the mark contains a person’s name.
“[I]s not a man’s name as strong an instance of trade-mark as can
be suggested?”
Ainsworth v.
Walmsley, 1 L. R.,
Eq. 518, 525 (1866). In fact, the English common law of trademarks
arose from the fact that “those who sold goods . . . that
were the fruit of their own labor or craftsmanship [began to]
identif[y] those products . . . with their own names.”
Pattishall, Constitutional Foundations, at 457. As we have
explained, virtually up until the Fourteenth Amendment’s adoption,
a trademark “really denoted only the name of the manufacturer.”
Pattishall, Two Hundred Years, at 128. And, this Court has long
associated names with the good will they may bear. See
McLean, 96 U. S., at 252;
L. E. Waterman Co.,
235 U. S., at 96 (“He purported to transfer to the partnership
the good will attaching to his name”). The names clause thus
protects “the reputation of the named individual” by preventing
another person from using his name.
Post, at 9 (opinion of
Barrett, J.).
Applying these principles, we have recognized
that a party has no First Amendment right to piggyback off the
goodwill another entity has built in its name. In
San Francisco
Arts & Athletics, Inc., the Court upheld a provision of the
Amateur Sports Act of 1978 that prohibited “ ‘any
person’ ” from using the word “ ‘Olympic’ ” for
certain purposes “ ‘[w]ithout the consent’ ” of the
U. S. Olympic Committee (USOC), and subjected violations to
“ ‘the remedies provided in the Lanham Act.’ ” 483
U. S., at 528 (quoting 36 U. S. C. §380(a);
alteration omitted). The Court rejected the argument that the
consent requirement violated the First Amendment because “Congress
reasonably could conclude” that the value of the word
“ ‘Olympic’ was the product of the USOC’s ‘own talents and
energy.’ ” 483 U. S., at 532–533 (quoting
Zacchini
v.
Scripps-Howard Broadcasting Co., 433 U. S. 562, 575
(1977)). Although the petitioner certainly had a First Amendment
right to speak on political matters, it lacked the right to
“exploit the commercial magnetism” of the word “Olympic” and the
USOC’s hard-won efforts in giving that word value. 483 U. S.,
at 539 (internal quotation marks omitted). The names clause guards
a similar interest. By protecting a person’s use of his name, the
names clause “secur[es] to the producer the benefits of [his] good
reputation.”
Park ’N Fly, Inc. v.
Dollar Park & Fly,
Inc., 469 U. S. 189, 198 (1985); see also Pattishall, Two
Hundred Years, at 121 (explaining how trademark law protects a
person’s “commercial identity, thereby [allowing him] to enjoy the
fruits of his own labor”).
2
We conclude that a tradition of restricting
the trademarking of names has coexisted with the First Amendment,
and the names clause fits within that tradition. Though the
particulars of the doctrine have shifted over time, the consistent
through line is that a person generally had a claim only to his own
name. The names clause reflects this common-law tradition by
prohibiting a person from obtaining a trademark of another living
person’s name without consent, thereby protecting the other’s
reputation and goodwill.[
5]
None of this is to say that the Government
cannot innovate when it comes to trademark law. A firm grounding in
traditional trademark law is sufficient to justify the
content-based trademark restriction before us, but we do not opine
on what may be required or sufficient in other cases. To be sure,
as Justice Barrett observes, a case presenting a content-based
trademark restriction without a historical analogue may require a
different approach.
Post, at 15. But, we need not develop
such a comprehensive theory to address the relatively simple case
before us today. See
post, at 1 (Kavanaugh, J., concurring
in part).
We conclude that the names clause is of a piece
with a common-law tradition regarding the trademarking of names. We
see no reason to disturb this longstanding tradition, which
supports the restriction of the use of another’s name in a
trademark.
III
Our colleagues would address the names clause
with two analogies. Neither is compelling in this case. Under both
analogies, the test would boil down to what a judge believes is
“reasonable in light of the purpose” of trademark law.
Post,
at 5 (opinion of Sotomayor, J.); see
post, at 7–8 (opinion
of Barrett, J.). But, no matter the approach taken, we all agree
that the names clause does not violate the First Amendment.
Justice Sotomayor would pull “strands of
precedent” together to conclude that heightened scrutiny does not
apply to trademark registration because it is a Government
initiative or benefit.
Post, at 8. This conclusion rests
primarily upon cases in which the Government provides a cash
subsidy or conditions the use of a public payroll to collect union
dues. See
ibid. But, those cases “occupy a special area of
First Amendment case law, and they are far removed from the
registration of trademarks.”
Tam, 582 U. S., at 241
(plurality opinion). The Government- benefit cases are an ill fit
for the names clause, and we would not graft this precedent, which
Justice Sotomayor acknowledges is not controlling, onto this
trademark dispute.
Post, at 8–9.
Justice Barrett, echoed by Justice Sotomayor,
would import the test that we have used for a “limited public
forum.” Our precedents hold that the Government “may create a forum
that is limited to use by certain groups or dedicated solely to the
discussion of certain subjects.”
Pleasant Grove City v.
Summum, 555 U. S. 460, 470 (2009). Justice Barrett
provides little explanation for why that approach makes sense in
the trademark context—she simply declares that the limited public
forum framework “is apt” due to the content-based nature of
trademark law.
Post, at 7. Although she attempts to cabin
the analogy to the content-based nature, the limited public forum
test is quite obviously about creating a
forum. And, there
is reason to doubt that the federal trademark register is analogous
to a limited public forum. To start, unlike a speaker in a limited
public forum, a markholder does not communicate with customers on
the register. Rather, as the Government acknowledges, the register
“is a way of warning potential infringers that they risk liability
if they use the same or confusingly similar marks.” Tr. of Oral
Arg. 19. The Government has also previously asserted that it did
not create a forum for speech by providing for the federal
registration of trademarks. See Reply Brief in
Matal v
.
Tam, O. T. 2016, No. 15–1293, p. 4 (“[T]he government has
not created a forum here”); Tr. of Oral Arg. in
Iancu v.
Brunetti, O. T. 2018, No. 18–302, p. 27 (“[W]e don’t
regard it as a limited public forum”). Without an analogous forum,
it is hard to see why the test for a limited public forum should
apply. We see no need to adopt a potentially fraught analogy to
resolve the names clause’s constitutionality.
Despite the differences in methodology, both
Justice Sotomayor and Justice Barrett reach the same conclusion
that the names clause does not violate the First Amendment. On the
bottom line, there is no dispute. Rather than adopt a
reasonableness test premised upon loose analogies, however, we
conclude that the names clause is grounded in a historical
tradition sufficient to demonstrate that it does not run afoul of
the First Amendment.
IV
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. Although an occasion may
arise when history and tradition cannot alone answer whether a
trademark restriction violates the First Amendment, that occasion
is not today. In a future case, we can address the “distinct
question” whether “a viewpoint-neutral, content-based trademark
restriction” is constitutional without “such a historical
pedigree.”
Post, at 1 (opinion of Kavanaugh, J.). The
judgment of the Court of Appeals is
Reversed.