Justices’ Trademark Consensus Belies Constitutional Rift (1)

The US Supreme Court’s Thursday decision blocking registration of a “Trump Too Small” trademark turned into a proxy fight over the justices’ methodology, with nods to hotter-button issues such as firearms and abortion.

All nine justices agreed that the “names clause” in the Lanham Act—which bans registering trademarks that reference living individuals without consent—doesn’t violate the First Amendment. Unlike provisions struck by the high court in 2017 and 2019, the clause passes muster as viewpoint-neutral, the justices agreed. While it is a content-based restriction, such limits are inherent to trademark law and don’t necessarily burden free speech impermissibly.

But multiple justices took issue with Justice Clarence Thomas’s history-focused methodology in the majority opinion.

The decision reflects a broader rift in constitutional interpretation that reaches beyond what will likely be a limited effect on trademark jurisprudence. Conservative Justice Amy Coney Barrett joined the three liberal justices in criticizing the majority’s reliance on legal history and tradition rather than trademark statutes and free speech precedent.

The justices seem to be “fighting about larger issues of judicial methodology” and are “relatively uninterested in the details of trademark law,” Harvard Law professor Rebecca Tushnet said. Other attorneys and professors also said the roots of the underlying tension extend well beyond the bounds of intellectual property.

“You’ll see this court rolling out similar analyses when discussing gun control, or when discussing reproductive rights,” trademark attorney Theodore H. Davis Jr. of Kilpatrick Townsend & Stockton LLP said. “The court is reaching back into history to determine what it should do in the present.”

Methodological Differences

The US Patent and Trademark Office rejected attorney Steve Elster’s 2018 application to register “Trump Too Small” as a clothing trademark, citing the names clause. But the US Court of Appeals for the Federal Circuit ruled that the denial ran afoul of the First Amendment.

That ruling cited the high court’s reasoning in nullifying a ban on “disparaging” trademarks in 2017 and a ban on “scandalous” and “immoral” marks in 2019. But the justices said Thursday the names clause attacked by Elster doesn’t discriminate based on viewpoint the way those restrictions did.

The justices’ paths to that conclusion varied widely. Thomas’s majority opinion, all or mostly joined by Justices Samuel A. Alito, Neil Gorsuch, John Roberts, and Brett Kavanaugh, outlined the roots of the names clause predating federal law. “A firm grounding in traditional trademark law is sufficient to justify the content-based restriction here,” Thomas wrote.

Barrett disagreed with that approach, arguing it’s better to look at how the restriction fit the purpose of trademark law.

“Barrett, seemingly properly, says ‘we’ve always done it that way’ cannot be a basis for constitutional review,” attorney Martin Schwimmer of Leason Ellis said.

Justices Sonia Sotomayor, Elena Kagan, and Ketanji Brown Jackson joined much of Barrett’s concurring opinion, as well as Sotomayor’s separate concurrence. Sotomayor advocated looking to trademark law and established First Amendment precedent rather than the dated history of analogous common law and faulted Thomas for basing his ruling on arguments that hadn’t been presented by the parties.

The “majority has drawn conclusive inferences from its historical evidence, all without any guidance from the litigants or the court below,” Sotomayor wrote. “That stark departure from settled principles of party presentation and adversarial testing in favor of in-chambers historical research by nonhistorians raises more questions than answers.”

Thomas called Sotomayor’s and Barrett’s framing—deciding whether a content-based, viewpoint-neutral bar is “reasonable in light of the purpose” of trademark law—subjective.

But Sotomayor said picking common law anecdotes, the degree to which they’re analogous, and “how much history is enough” likewise involves plenty of subjectivity. Referencing a 1993 concurrence by the late conservative Justice Antonin Scalia, she said Thomas’ approach “empowers judges to pick their friends in a crowded party.”

Thomas described the decision as “narrow” and said it doesn’t set a framework to judge all content-based, viewpoint-neutral restrictions. But Davis said that disclaimer won’t cabin the opinion entirely.

“It is nevertheless going to cast a very long shadow over what those frameworks should be,” Davis said.

‘Doctrinal Chaos’

Both the history and purpose approaches have implications for trademark law, University of San Diego law professor Lisa Ramsey said. Trademark dilution law, which protects famous brands, for example, is a relatively new premise that doesn’t align neatly with either approach—it has minimal historical basis, she said, and it doesn’t strike at the explicit focus of trademark law, which is preventing consumer confusion.

“That history and tradition focus of the majority opinion might suggest that a majority of the court would find dilution law unconstitutional,” Ramsey said. At the same time, “First Amendment scholars might say that if that’s the main purpose of trademark law, dilution law doesn’t require actual or likely confusion.”

Trademark advocates might respond that there are dual goals: preventing confusion and protecting a trademark owner’s goodwill, Ramsey said.

Tushnet said the opinions went beyond trademark law and were “very much about the larger approach to First Amendment issues, the relevance of history and tradition, and whether Justice Thomas is going to get anyone else to join him in his crusade against modern defamation law.”

There’s currently “zero consensus” on free-speech methodology, she said, leaving few guardrails in applying that approach.

“So how does one draw comparisons? How does one draw lessons from the past?” Tushnet said. “That’s going to continue to cause, I think, some doctrinal chaos.”