What’s in a Name? – Vidal v Elster
by Michael Antone, Counsel, and Erin Kelly, Summer Associate
In the recent US Supreme Court of Vidal v Elster, the Court unanimously held that the “Names Clause” in US trademark law, known as the Lanham Act, 15 U. S. C. §1052(c), does not violate the First Amendment right of free speech. The Names Clause provides that “[n]o trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … [c]onsists of or comprises a name … identifying a particular living individual except by his written consent”.
Mr. Elster argued that the Names Clause unconstitutionally restricted his free speech rights by preventing him from receiving a US trademark registration for the phrase “Trump too small”. Trademark law gives the owner of a trademark the right to exclude others from using the trademark. As such, Mr. Elster, was somewhat ironically arguing that the Names Clause violated his First Amendment rights by refusing to allow him to obtain trademark rights that, in turn, would allow him to exclude everyone else, including Mr. Trump, from using the phrase.
The Names Clause and this decision do not restrict Mr. Elster’s and anyone else’s right of free speech to use the phrase. The Names Clause merely provides that you can not register and claim exclusive rights in a mark that uses another living person’s name without their permission, which is consistent with historical precedent.
The purpose of a trademark is inherently commercial as a trademark is used to identify to consumers the source of goods and services labeled with the trademark. The use of someone else’s name as a trademark is using another person’s identity, goodwill, and reputation, i.e., their personal intellectual property associated with the name, for personal gain, irrespective of whether the usage is flattering or unflattering. As such, the Names Clause merely reflects the age-old principle that you can not use another person’s intellectual property, which in this case is embodied in their name, without their permission.
Read more in our Trademarks FAQ
