William & Mary Bill of Rights Journal
Abstract
This Article is the first to examine whether trademark anti-tarnishment laws should be deemed constitutional after the Supreme Court’s 2024 decision in Vidal v. Elster. Anti-tarnishment laws protect famous brands from uses that could damage their reputation, even when consumers are not confused about who makes the tarnishing product.
The Supreme Court recently declared some trademark registration restrictions unconstitutional in Matal v. Tam and Iancu v. Brunetti. In these cases, the Court struck down federal laws that prevented registration of “disparaging” trademarks and “scandalous or immoral” trademarks because they categorized the registration bars as unconstitutional viewpoint-based restrictions. These decisions raised serious questions about whether anti-tarnishment protection might also violate free speech rights. Many legal scholars argue that these laws are unconstitutional viewpoint-based restrictions because they allow trademark owners to silence criticism and negative commentary about their brands.
However, Elster provides new frameworks for assessing anti-tarnishment laws. In Elster, an applicant was barred from registering a mark critical of Donald Trump and challenged the bar as an unconstitutional speech restriction. The Justices agreed that 15 U.S.C. § 1052(c), which barred registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent,” was a content-based but viewpoint-neutral restriction. But the Court did not apply heightened or strict constitutional scrutiny to the provision, even though content-based laws often trigger such scrutiny. The majority instead utilized a more flexible approach, examining the historical tradition of similar trademark restrictions and their coexistence with the First Amendment. Four concurring justices would instead have held that the restriction reasonably serves trademark law’s fundamental purposes of preventing consumer confusion and protecting mark owner goodwill.
This Article argues that anti-tarnishment protection should survive constitutional challenges under either approach. These laws target preventing harm from incongruous associations—such as using a luxury brand name on inferior products—rather than suppressing particular viewpoints. They safeguard the commercial goodwill that trademark owners have developed through years of business investment, and that goodwill provides valuable sorting signals to consumers. The Article further cautions against using constitutional interpretation to dismantle reasonable commercial regulations. Courts should allow Congress to determine how to regulate commerce, including trademark law, rather than using constitutional scrutiny to invalidate reasonable content-based but viewpoint-neutral market regulations.