Vidal v. Elster: A Unanimous Judgment, a Divided Court, and the Limits of History

Vidal v. Elster, 602 U.S. ___ (2024), No. 22-704, decided June 13, 2024, completes a trilogy and opens a methodological debate. After Matal v. Tam (2017) struck down the Lanham Act’s bar on disparaging marks and Iancu v. Brunetti (2019) struck down its bar on immoral or scandalous marks — both as impermissible viewpoint discrimination — the open question was whether any content-based registration bar could survive the First Amendment. In Vidal, the Court answered yes, unanimously upholding the “names clause,” 15 U.S.C. § 1052(c), which forbids registration of a mark that uses a living individual’s name without that person’s consent.

At a glance

• Case: Vidal v. Elster, No. 22-704, 602 U.S. ___ (2024)
• Decided: June 13, 2024; judgment unanimous (9-0), controlling opinion by Justice Thomas, with multiple concurrences in the judgment
• Holding: The Lanham Act’s names clause does not violate the Free Speech Clause; a viewpoint-neutral, content-based condition on trademark registration of this kind is constitutional
• Status: Final; the Federal Circuit’s contrary judgment was reversed and the refusal of registration stands

The dispute

The applicant, Steve Elster, sought to register “Trump too small” for use on shirts and hats — a phrase referencing a 2016 primary-debate exchange and intended as political commentary. The Trademark Trial and Appeal Board refused registration under the names clause because the mark used the name of a living individual (former President Trump) without his consent. The Federal Circuit reversed, holding the clause unconstitutional as applied to Elster’s expressive mark. The Supreme Court reversed the Federal Circuit and sustained the refusal.

Viewpoint-neutral, but content-based

The doctrinal pivot is the distinction between viewpoint discrimination and content discrimination. The bars invalidated in Tam and Brunetti turned on the attitude a mark expressed; they penalized particular viewpoints — disparagement, immorality — and so could not stand. The names clause is different in kind. It is content-based, because its application depends on whether the mark contains a person’s name; but it is viewpoint-neutral, because it applies regardless of whether the mark flatters or mocks the named individual. A laudatory “Trump” mark and a critical one are treated identically. That neutrality is what took the clause outside the rule that doomed its predecessors.

The harder question was what standard a viewpoint-neutral but content-based condition on the benefit of registration must satisfy. Registration is not a prohibition on speech — Elster remained free to print and sell his shirts — but a government-conferred bundle of advantages. It is on the question of how to evaluate such a condition that the Court’s apparent unanimity dissolves.

The fracture over method

Justice Thomas, writing the controlling opinion, declined to apply heightened scrutiny at all. His approach was historical: content-based trademark restrictions of this character — including longstanding limits on registering marks that appropriate another’s name — have coexisted with the First Amendment since the early days of American trademark law, and that long and unbroken tradition is itself sufficient to sustain the names clause. On this view, where history supplies a settled answer, tiers of scrutiny are unnecessary.

That portion of the opinion did not command a majority. Justices Roberts and Kavanaugh joined the Court’s opinion except for the part resting the result on history and tradition alone; Justice Barrett joined only the earlier sections. The concurrences are where the disagreement surfaces. Justice Barrett, joined in parts by Justices Kagan, Sotomayor, and Jackson, agreed the clause is constitutional but objected to deciding the case on history alone, preferring a standard grounded in the reasonableness of the restriction in light of trademark’s source-identifying purposes. Justice Sotomayor, joined by Justices Kagan and Jackson, would have resolved the case within the established First Amendment framework governing limited government programs and benefits, rather than constructing a novel history-only test.

The upshot bears emphasis: nine Justices agreed on the result, but no rationale for how to evaluate such restrictions commanded a majority. Vidal is unanimous in judgment and fractured in method.

Open questions

The methodological split is the part of Vidal most likely to recur. Future challenges to other registration bars — for example, provisions touching on geographic terms, deceptiveness, or the use of others’ identities — will arrive without a majority-endorsed standard of review. Litigants will be left to argue history versus reasonableness versus conventional First Amendment doctrine, and lower courts will have to choose among approaches the Court itself could not reconcile. Whether the “history and tradition” method migrates from its other recent homes into trademark and broader speech doctrine is the live question the opinion leaves open.

Implications for practitioners

• Registration of name-based marks requires consent. A mark built on a living person’s name cannot be federally registered without that person’s consent, and the First Amendment does not compel an exception — even for political expression.
• Use is not registration. The decision governs the privilege of registration, not the right to use a phrase in commerce. Common-law use rights and First Amendment use defenses occupy separate ground and were not foreclosed.
• Advise on the celebrity/public-figure branding trap. Clients seeking to capitalize on a public figure’s name should be counseled that registration is unavailable absent consent, regardless of the message.

Frequently asked questions

Was the decision really unanimous? The judgment was 9-0 — every Justice agreed the names clause is constitutional. But the reasoning fractured, and no single rationale drew a majority. (Reports describing it as a 6-3 decision are incorrect.)

Can Steve Elster still sell “Trump too small” shirts? The ruling concerned federal registration of the mark, not the ability to use the phrase. The Court did not hold that he could be barred from using or selling the expression.

Does this overrule Tam and Brunetti? No. Those cases struck down viewpoint-based bars; Vidal upholds a viewpoint-neutral, content-based one. The decision distinguishes them rather than disturbing them.

Authorities and sources

• Vidal v. Elster, No. 22-704, 602 U.S. ___ (June 13, 2024): opinion (Cornell LII); case file (SCOTUSblog).
• Analysis: National Constitution Center, “Vidal v. Elster: A Unanimous Decision from a Divided Court”.