“History and tradition” has emerged as a dominant mode of constitutional interpretation on the Supreme Court in recent terms.1 But while the Court’s conservative justices largely agree that history should be used to interpret the Constitution,2 there remains disagreement about how to do so. In this term, a dispute over a restriction on trademark registration in the Supreme Court generated a disproportionate amount of attention, as a potential rift formed within the conservative majority over the proper role of history in constitutional adjudication.3 The case, Vidal v. Elster,4 was the third in a trio of First Amendment challenges to provisions of the Lanham Act,5 the primary federal trademark law, that reached the Supreme Court in recent years.6 Although the Court unanimously rejected the challenge to the Lanham Act’s “names clause,”7 finding it consistent with the First Amendment, the majority neglected to provide meaningful guidance on how courts should approach future challenges to viewpoint-neutral but content-based trademark regulations. The Court’s reliance on historical analogies without offering a clear framework for future cases may lead to uncertainty and inconsistency in lower courts.

In 2018, Steve Elster attempted to register a trademark for the phrase “TRUMP TOO SMALL” to be printed on T-shirts.8 The Patent and Trademark Office (PTO) denied Elster’s registration because the Lanham Act prohibits registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except with his written consent.”9 The Trademark Trial and Appeal Board upheld the denial and rejected Elster’s argument that this “names clause”10 violated his First Amendment speech rights.11

The Federal Circuit reversed and held that the names clause violated the First Amendment.12 Writing for the panel, Judge Dyk said that while the names clause is not face-to-face discriminatory like the provisions of the Lanham Act that the Supreme Court recently declared unconstitutional in Matal v. Tam13 and Iancu v. In the case of Brunetti,14 “as applied here, [the Names Clause] involves content-based discrimination that [was] justified by neither a compelling reason nor a substantial governmental interest.”15 The court rejected the government’s arguments that trademark registration restrictions are conditions on government benefits or akin to restrictions on speech in public forums.16 The court declined to decide whether a “content-based, viewpoint-neutral restriction in the trademark area” is subject to strict or intermediate scrutiny,17 holding that regardless of the test applied “the government has no privacy or publicity interest in restricting critical speech of government officials or public figures in the trademark context.”18 The Supreme Court granted certiorari.19The Supreme Court reversed the holding. 20 Writing for the Court, Justice Thomas21 began by distinguishing between content-based speech regulations and content-neutral regulations: “A content-based regulation ‘targets speech based on its communicative content,’ restricting discussion of a topic or issue.”22 In general, content-based speech regulations are “presumptively unconstitutional and can be justified only if the government shows that [they are] narrowly tailored to serve compelling state interests.”23 Justice Thomas noted that Supreme Court precedents further distinguish “viewpoint discrimination” as a “particularly ‘egregious’ form of content discrimination” that targets not only the subject matter but also the views taken on an issue. 24 Both content- and viewpoint-based distinctions come under more rigorous scrutiny, “although viewpoint discrimination’s ‘violation of the First Amendment’ is… 25

Next, Justice Thomas distinguished the Names Clause from the Lanham Act provisions that were found to be viewpoint discriminatory in Tam and Brunetti. In Tam, the Lanham Act’s prohibition on registering disparaging trademarks violated the First Amendment “because it prohibited trademarks based solely on one viewpoint: ‘to offend.’” 26 In Brunetti, the Court held that the ban on scandalous or immoral trademarks was unconstitutional for the same reason. 27 Unlike those provisions, the Court held that “the Names Clause does not frontally discriminate against any viewpoint” in that it prevents the registration of a trademark of a person’s name without that person’s consent, regardless of the message the registrant wishes to convey. 28 Although the Court found the Names Clause not to be viewpoint discriminatory, it still found the clause to be content-based because the clause’s enforceability “depends on the content of the proposed trademark, whether it contains a person’s name.” 29

Although content-based free speech regulations are prescriptively unconstitutional, Justice Thomas noted that “trademark rights have always coexisted with the First Amendment, despite the fact that trademark protection necessarily requires some content-based distinctions.”30 This fact “argued against a per se rule of applying heightened scrutiny to viewpoint-neutral but content-based trademark regulations.”31 Justice Thomas then recounted some of the early history of trademark restrictions in England and the United States,32 observing that many of those restrictions were triggered by the content of the mark.33 The Court also acknowledged that there was no federal trademark law in the early United States, and that “trademark law largely fell within ‘the province of the States’ during the eighteenth and most of the nineteenth centuries.” 34 In 1870, Congress enacted its first federal trademark law “‘to provide a degree of national uniformity’ for the protection of trademarks.”35 The initial 1870 law included “prohibitions on what could be protected as a trademark,” and “[t]hroughout its development, trademark law [continued] to require distinctions based on content.”36 Justice Thomas drew attention to the fact that when Congress enacted the Lanham Act in 1946, the Act included restrictions on what could be protected as a trademark. registered: For example, it “prohibited the registration of ‘a mark that so closely resembles [another’s] mark…as to be likely…to cause confusion, or to cause mistake, or to deceive.’”37 As Justice Thomas noted, “[i]t is impossible to determine whether one mark is the same as (or confusingly similar to) another without looking at the content of the two marks.”38 Citing the “solely content-based nature of trademark regulation” and the historical pedigree of such regulations, the Court declined to apply more rigorous scrutiny to content-based trademark restrictions.39

Rather than “outlining an exhaustive framework” for when content-based trademark restrictions violate the First Amendment, Justice Thomas examined the “history and tradition” of similar trademark restrictions to conclude that the Names Clause was constitutional. 40 First, the Court identified a common law history “restricting the registration of names”: a person could not register a name, even his own, on its own and “could not use a mark containing his name to the exclusion of a person with the same name.” 41 The Court then noted that this common law understanding carried over into federal statutory trademark law. 42 Justice Thomas noted how the Names Clause “reflects the historical logic of trademark law of identifying the source of goods” and “respects the established connection between a mark and its protection of the trademark holder’s reputation.” 43 Because of this long-standing tradition, the Court held that the Names Clause was constitutional. 44

Justice Kavanaugh concurred in part. 45 She wrote separately to note that a “content-based, viewpoint-neutral trademark restriction might well be constitutional even in the absence of such a pedigree.”46

Justice Barrett also concurred in part, joined in full by Justice Kagan and joined in part by Justices Sotomayor and Jackson.47 Judge Barrett noted her disagreement with the Court’s reasoning, particularly its use of “history and tradition” to resolve the constitutionality of the Names Clause.48 First, Judge Barrett noted that the Court’s historical evidence “consisting of loosely related cases…does not establish a historical analogue for the Names Clause,” and second, she questioned the Court’s methodology of “looking for historical ancestors restriction by restriction.” 49 Rather, Judge Barrett would have upheld the Names Clause, and any such restriction, “whether new or old,… 50 For Judge Barrett, the history of courts and legislatures discriminating on the basis of content in the trademark context was “necessary to [the trademark’s] purposes and limitations.”51 Thus, her agreement with the majority that the Court should not “treat content-based trademark registration restrictions as presumptively unconstitutional” stemmed from a conviction that content discrimination is essential to effectuating the purpose of trademark law, rather than the weight of any particular historical precedent. 52 Although she would not subject content-based trademark restrictions to strict scrutiny, Judge Barrett would still subject them to “judicial review.”53 She would analyze trademark restrictions as a kind of limited public forum, where courts evaluate restrictions as to “whether they are reasonable in light of the purpose served by the forum in question.” 54 Under this test, Judge Barrett would uphold the naming clause. 55Judge Barrett further criticized the majority’s “history and tradition” methodology. She argued that the “historical record did not support the Court’s conclusion,” and she also took issue with the Court’s treatment of “tradition as a determinative factor on the First Amendment question.”56 For one, Judge Barrett did not view the majority’s common law evidence as analogous to the Names Clause.57 Furthermore, she identified several 19th-century state court decisions that permitted the registration of trademarks that included the names of famous people to denote fantasy.58 Judge Barrett went on to say that “[e]ven if the Court’s evidence were rock solid, [she] still would not take this approach.” 59 She noted that while “[r]elying exclusively on history and tradition may seem like a way to avoid tests made by judges… 60 Judge Barrett would therefore have proceeded on general principle, writing that the Court’s “approach merely delays the inevitable: eventually, the Court will find a restriction without a historical analogue and will be forced to articulate a test to analyze it.”61

Justice Sotomayor concurred in the ruling, joined by Justices Kagan and Jackson. 62 Judge Sotomayor would eschew the majority’s focus on history and instead decide the case based on “trademark law and established First Amendment precedent.”63 In Judge Sotomayor’s view, federal trademark registration confers a benefit on the trademark holder, and therefore the government can condition that benefit on “reasonable, viewpoint-neutral content regulations.” 64 Echoing Justice Barrett, Justice Sotomayor criticized the Court’s reliance on history, arguing that the “back-and-forth [between Justices Thomas and Barrett] highlights the indeterminacy of the Court’s decision.”65 She further criticized the majority for drawing conclusions from historical evidence not presented by the litigants or the lower court.66

The Court unanimously reached the reasonable conclusion that the federal government may place limitations, such as the Names Clause, on trademark registration. Although the majority of the Court supported Justice Thomas’s opinion based on history and tradition, and all of the Court’s conservative justices have expressed a willingness to use history in constitutional jurisprudence,67 the divergent methodologies in Elster highlight the difficulty of operationalizing history as a methodological tool. While attempting to ground constitutional interpretation in history, the majority’s approach in Elster—relying exclusively on history rather than establishing a generalizable framework for lower courts to resolve future cases—may ultimately undermine the goals that originalism initially sought to achieve: consistency, predictability, and judicial restraint.

Since its debut as a primary method of constitutional jurisprudence,68 history and tradition have operated differently in different contexts. For example, in New York State Rifle & Pistol Ass’n v. Bruen,69 the Court looked to founding-era regulations to determine the contours of Second Amendment law,70 while in Dobbs v. In Jackson Women’s Health Organization,71 the Court looked to pre- and post-ratification history to disprove the existence of a tradition sufficient to support an unenumerated right.72 Thus, in the context of the Second Amendment, history and tradition operated to delineate the scope of a right (previously demarcated through originalist methodologies),73 whereas in the context of substantive due process, history and tradition would have been necessary to support the existence of a right. In Elster, the Court looked to pre- and post-ratification history to determine the contours of the Free Speech Clause.74

Although some originalists might argue that Bruen’s methodology is compatible with originalism, its use in Elster is distinct, making the more recent manifestation of history and tradition a poor match for originalist principles and goals. Professors Lawrence Solum and Randy Barnett note that, consistent with originalism, history and tradition could be used as a “method for constitutional construction in underdetermination cases.”75 They contrast this methodological approach with one that treats history and tradition as the “direct source of constitutional construction,” especially one that relies on “practices that emerge long after the adoption of the constitutional provision.”76 The history and tradition in Elster was more like this second approach: Justice Thomas did not claim to use history and tradition as evidence of the original meaning of the Free Speech Clause. Nor could he, because as Justice Barrett noted, “federal trademark law did not exist at the founding.”77 77 In Elster, history and tradition operated alone as sources of judicial decision: the Court “presented tradition itself as the constitutional argument.”78 Thus, unlike the Court’s methodology in Bruen,79 the use of history and tradition in Elster operated as an independent constitutional theory. This theory cannot be reconciled with originalism, since it abandons the central notion that judges should be constrained by the original meaning of the Constitution. 80

There is also a fundamental tension between the Court’s approach in Elster and the purported goals of the originalist project of recent decades. Legal conservatives have long extolled originalism as a methodology that eliminates judicial discretion by providing judges with neutral principles with which to resolve legal disputes.81 For then-Professor Robert Bork, the goal of his proto-originalism82 was “to take from the [Constitution] rather specific values ​​that the text or history show the framers actually intended and that are capable of being translated into principled rules.” 83 Similarly, in 1989, Justice Scalia distinguished his jurisprudential preference for clear rules against a “common law approach that confers discretion” that he viewed as “ill-suited…to a legal system in which the Supreme Court can review only an insignificant proportion of decided cases.”84 Now, with originalism in many ways ascendant on the Supreme Court,85 the conservative majority has to operationalize historical methodology. But in Elster, Justice Thomas’s approach looked more like a kind of common law jurisprudence than “rule law.”86 It requires justices to look for historical analogies in the case at hand without providing a generalizable framework for analyzing potential analogies.

Justice Thomas’s quick rejection of the frameworks proposed by Justice Sotomayor and Justice Barrett was unexplained and equally applicable to his own opinion. Justice Thomas gave two main justifications for rejecting his colleagues’ approaches: first, the analogies they offered were “unconvincing”;87 and second, under either approach, the “test would come down to what a judge believes is ‘reasonable in light of the purpose’ of trademark law.”88 While the first criticism is a matter of appropriateness, the second is a matter of principle. Justice Thomas believed that the proposed frameworks would give judges too much discretion in determining what is reasonable.89 This position largely aligns with the stated goal of generations of originalists.90 However, Justice Thomas’ methodology, which ignores the indeterminacy of history and gives no guidance to lower courts about what historical evidence is sufficient to validate “presumptive unconstitutional” content-based restrictions,91 is plagued by the same problems she identifies with discretion-conferring reasonableness tests.93

In her concurring opinion in United States v. Rahimi of this period,94 Justice Jackson highlighted the difficulty lower courts have had in applying the Court’s “history and tradition” test in Second Amendment cases.95 She further noted that “[s]cholars report that lower courts applying the Bruen approach have failed to produce ‘consistent and principled results.’”96 She argued that the “rule of law” suffers without “legal norms that foster stability, facilitate coherence, and promote predictability.”97 At worst, the indeterminacy associated with applying history and tradition allows judges to decide whether the Court’s “history and tradition” test is consistent with the Court’s “history and tradition” test.98

This same criticism is even more apparent in the context of the First Amendment, where it has been especially difficult to reach a consensus on the original meaning. Professor Jud Campbell has argued that at the Founding, the First Amendment “represented a general principle—leaving room for considerable debate about how it should be applied in practice—and also the entrenchment of more specific, established principles.”98 For the founding generation, “judges were not supposed to create new limits on governmental authority.”99 Thus, historical evidence, such as judicial opinions finding fraud when a person sells goods under another person’s name, tells us nothing about the scope of the First Amendment.100 The judges who tried these cases would not have thought the First Amendment was involved at all.

Elster may foreshadow further litigation challenging trademark restrictions. This was the third in a trio of First Amendment challenges to the Lanham Act provisions in recent years that reached the Supreme Court. But the Lanham Act has far more restrictions on trademark registration than the three provisions challenged in Tam, Iancu, and Elster.101 Without a clear standard defining the limits on permissible trademark restrictions, the enterprise the Court initiated in Tam may end up needing to litigate each provision of the Lanham Act to determine which operate within the permissible bounds of historical practice. If the historical methodology applied in Elster continues to apply, only the Supreme Court can be the ultimate arbiter of what history deems sufficiently analogous.