Intellectual Property News and Reports

Held: The Lanham Act’s names clause does not violate the First Amendment. Pp. 3–22. 

(a) When enforcing the First Amendment’s prohibition against abridging freedom of speech, this Court “distinguish[es] between content-based and content-neutral regulations of speech.” National Institute of Family and Life Advocates v. Becerra, 585 U.S. 755, 766. A content-based regulation “target[s] speech based on its communicative content,” Reed v. Town of Gilbert, 576 U.S. 155, 163, and is “ ‘presumptively unconstitutional,’ ” National Institute of Family and Life Advocates, 585 U. S., at 766. Viewpoint discrimination is a particularly “egregious form of content discrimination” that targets not merely a subject matter “but particular views taken by speakers on the subject.” Rosenberger v. Rector and Visitors of Univ. of Va., 515 U.S. 819, 829. This Court has twice concluded that trademark restrictions that discriminate based on viewpoint violate the First Amendment. See Matal v. Tam, 582 U.S. 218; Iancu v. Brunetti, 588 U.S. 388.

Because the names clause does not single out a trademark “based on the specific motivating ideology or the opinion or perspective of the speaker,” Reed, 576 U. S., at 168, it does not facially discriminate against any viewpoint. But a law that does not facially discriminate based on viewpoint may still be found to discriminate based on viewpoint in its practical operation. See Sorrell v. IMS Health Inc., 564 U.S. 552, 565. Elster suggests that is the case here because obtaining consent for a trademark under the names clause is easier if it flatters rather than mocks a subject. But there are many reasons why a person may wish to withhold consent to register a trademark bearing his name. ccccccccccccccccc Although the names clause is not viewpoint based, it is content based because “it applies to particular speech because of the topic discussed or the idea or message expressed,” Reed, 576 U. S., at 163—i.e., it turns on whether the proposed trademark contains a person’s name. Thus, the Court confronts a situation not addressed in Tam and Brunetti. Pp. 3–6.

(b) Although a content-based regulation of speech is presumptively unconstitutional, this Court has not decided whether heightened scrutiny extends to a content-based—but viewpoint-neutral—trademark restriction. Several features of trademark counsel against a per se rule of applying heightened scrutiny in such cases. Most importantly, trademark rights have always coexisted with the First Amendment, and the inherently content-based nature of trademark law has never been a cause for constitutional concern.

This country has recognized trademark rights since the founding. Much of early American trademark law came by way of English law, where the protection of trademarks was an inherently content-based endeavor. For most of the 18th and 19th centuries, trademark law fell largely within the “province of the States,” Tam, 582 U. S., at 224, and went largely unrecorded. The first reported decisions in state and federal courts revolved around a trademark’s content. See Thomson v. Winchester, 36 Mass. 214, 216; Taylor v. Carpenter, 3 Story 458 (D. Mass.). And as recorded trademark law began to take off in the last decades of the 19th century, its established content-based nature continued. In 1870, Congress enacted the first federal trademark law, containing prohibitions on what could be protected as a trademark. It restricted a trademark based upon its content. And as trademark disputes increased, courts continued to assess trademarks based on their content. The content-based nature of trademark law 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. This 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.

The content-based nature of trademark protection is compelled by the historical rationales of trademark law—to prohibit confusion by identifying the ownership and source of goods. Indicating ownership and the manufacturing source touch on the content of the mark, i.e., from whom the product came. And policing trademarks so as to prevent confusion over the source of goods requires looking to the mark’s content. Because of the uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment, a solely content-based restriction of trademark registration need not be evaluated under heightened scrutiny. R. A. V. v. St. Paul, 505 U.S. 377, 387. Pp. 6–12.

(c) The history and tradition of restricting trademarks containing names is sufficient to conclude that the names clause is compatible with the First Amendment. Pp. 12–19. (1) Restrictions on trademarking names 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. See Brown Chemical Co. v. Meyer, 139 U.S. 540, 544. The common law prevented a person from trademarking any name—even his own—by itself. It did, however, allow a person to obtain a trademark containing his own name, provided that he could not use the mark containing his name to the exclusion of a person with the same name. The common-law approach thus protected only a person’s right to use his own name, an understanding that was carried over into federal statutory law and included in the names clause. The Court finds no evidence that the common law afforded protection to a person seeking a trademark of another living person’s name. This common-law understanding is reflected in federal statutory law, and its requirement that a trademark contain more than merely a name remains largely intact. See §1052(e)(4). It is thus unsurprising that the Lanham Act included the names clause.

The restriction on trademarking names also reflects trademark law’s historical rationale of identifying the source of goods and thus ensuring that consumers know the source of a product and can evaluate it based upon the manufacturer’s reputation and goodwill. Moreover, the clause respects the established connection between a trademark and its protection of the markholder’s reputation. This Court has long recognized that a trademark protects the markholder’s reputation, and the connection is even stronger when the mark contains a person’s name.

Applying these principles, the Court has also recognized that a party has no First Amendment right to piggyback off the goodwill another entity has built in its name. See San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 528. 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. Pp. 12–19. 

(2) A tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition. The names clause reflects the 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. A firm grounding in traditional trademark law is sufficient to justify the content-based trademark restriction here, but a case presenting a content-based trademark restriction without a historical analog may require a different approach. In this case, the Court sees no reason to disturb this longstanding tradition, which supports the restriction of the use of another’s name in a trademark. P. 19–20. 

(d) This decision is narrow. It does not set forth a comprehensive framework for judging whether all content-based but viewpoint-neutral trademark restrictions are constitutional. Nor does it suggest that an equivalent history and tradition is required to uphold every content-based trademark restriction. The Court holds only that history and tradition establish that the particular restriction here, the names clause in §1052(c), does not violate the First Amendment. P. 22.

26 F. 4th 1328, reversed. ccccccccccccccccccc Thomas, J., announced the judgment of the Court and delivered the opinion of the Court, except as to Part III. Alito and Gorsuch, JJ., joined that opinion in full; Roberts, C. J., and Kavanaugh, J., joined all but Part III; and Barrett, J., joined Parts I, II–A, and II–B. Kavanaugh, J., filed an opinion concurring in part, in which Roberts, C. J., joined. Barrett, J., filed an opinion concurring in part, in which Kagan, J., joined, in which Sotomayor, J., joined as to Parts I, II, and III–B, and in which Jackson, J., joined as to Parts I and II. Sotomayor, J., filed an opinion concurring in the judgment, in which Kagan and Jackson, JJ., joined.

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