Justice Amy Coney Barrett did something interesting last week in an otherwise uninteresting case. The Supreme Court delivered its ruling last Thursday in Vidal v. Elster, which involved First Amendment claims in trademark law. The justices ultimately concluded that the government can refuse to register trademarks that use other people’s names without their permission.
While the decision was unanimous, the reasoning behind it was not. Justice Clarence Thomas took what seemed like a classically originalist path: He surveyed centuries of historical evidence in the English and American legal systems, concluded that there was a strong historical tradition of restricting unauthorized trademarks of other people’s names, and ruled that the First Amendment allowed it.
Barrett rejected Thomas’s reasoning outright. “Relying exclusively on history and tradition may seem like a way of avoiding judge-made tests,” she wrote in a concurring opinion. “But a rule rendering tradition dispositive is itself a judge-made test. And I do not see a good reason to resolve this case using that approach rather than by adopting a generally applicable principle.”
While this might seem like a minor difference in practical terms, it is a significant one in legal theory. The conservative justices’ favored method of constitutional interpretation these days is originalism, where judges are supposed to interpret the Constitution’s meaning based on its “original public meaning.” It would be too much to say that Barrett is rejecting this approach in whole or in part. But she appears increasingly willing to call out other originalists when their evidence of a historical tradition is weak. Even more importantly, she is unwilling to let it be the exclusive means by which she reads the Constitution.
At issue in this particular case was a trademark involving former President Donald Trump. Steve Elster, a labor lawyer based in California, sought to trademark the phrase “Trump too small,” along with an illustration of a hand making a “small” gesture. Elster’s mark was an apparent reference to an exchange between Trump and Florida Senator Marco Rubio during the 2016 GOP primaries, where Rubio famously questioned the size of one of Trump’s physical attributes.
The U.S. Patent and Trademark Office denied Elster’s application, citing a provision in the Lanham Act, the flagship federal trademark law, known as the “names clause.” The clause generally forbids the agency from registering trademarks that include a “name, portrait, or signature identifying a particular living individual” without that person’s consent. According to the PTO, the clause avoids confusion in the marketplace over whether certain people endorse certain products, which could unfairly bolster one’s own goods or even undercut a competitor.
Elster sued the agency in federal court on First Amendment grounds. He argued that the PTO examiner had discriminated against him based on the content of Elster’s proposed trademark. The Federal Circuit Court of Appeals, which exclusively hears appeals from certain federal agencies, sided with Elster in a ruling two years ago. The PTO asked the Supreme Court last year to intervene and reinstate the names clause.
While the First Amendment generally forbids the government from curtailing speech, not all such restrictions are equal. Courts are least forgiving when the government restricts speech based on the speaker’s viewpoint—say, for example, if it allows unauthorized Trump-related trademarks, but not Biden-related ones. In the recent cases Matal v. Tam and Iancu v. Brunetti, the justices struck down restrictions against trademarks that were considered either “disparaging” or “immoral and scandalous” for that reason.
Restrictions that are viewpoint-neutral, like forbidding both Trump-related and Biden-related trademarks, receive a little more leeway from the courts, so long as the government has a good reason for them. Thomas opted for the more forgiving approach rather than the less forgiving one. He cited a wide range of historical cases, both English and American, to claim that history and tradition showed that the names clause was constitutional.
“We conclude that a tradition of restricting the trademarking of names has coexisted with the First Amendment, and the names clause fits within that tradition,” Thomas concluded. “Though the particulars of the doctrine have shifted over time, the consistent through line is that a person generally had a claim only to his own name. The names clause reflects this common-law tradition by prohibiting a person from obtaining a trademark of another living person’s name without consent, thereby protecting the other’s reputation and goodwill.”
In her concurring opinion, Barrett strongly disagreed with that approach. She agreed that the names clause did not violate the First Amendment. But she took issue with Thomas’s attempt to ground that decision in a “history and tradition” analysis, as well as his subsequent refusal to establish a standard for courts to use if there is no clear historical analogue for trademark restrictions that are viewpoint neutral.
“That is wrong twice over,” Barrett wrote. “First, the court’s evidence, consisting of loosely related cases from the late-19th and early-20th centuries, does not establish a historical analogue for the names clause. Second, the court never explains why hunting for historical forebears on a restriction-by-restriction basis is the right way to analyze the constitutional question.”
Barrett undertook her own review of the relevant history and concluded it was much less clear that such a tradition existed. She noted that Thomas did not “fully grapple with countervailing evidence” from nineteenth-century U.S. courts or address key differences between the current federal trademark law and its predecessors. Barrett even noted that the legislative history of the Lanham Act suggested the names clause’s drafters intended to go beyond the existing common-law approach.
These critiques are not novel in and of themselves. A major objection to originalism is that it engages in “law-office history,” in which lawyers and judges scour the historical record for evidence that supports their case and discard anything that doesn’t. Professional historians have also long criticized originalists for their cavalier approach to historical research.
“The history that historians write is much too complicated, too unwieldy to be used,” Gordon Wood, a prominent historian of the early American republic, told an audience of legal scholars in 2013. “As I say, judges have created what has been called ‘history lite.’ I think it’s an essential part of what you do, or what jurists do, and I don’t disparage it. But let’s not get it confused with real critical history because that can’t be used very effectively.”
What is striking is seeing similar critiques coming from Barrett herself. The court’s second-newest justice has previously identified herself with the originalist camp. During her confirmation hearings in 2020, she also recognized that even originalists could disagree with one another about the original public meaning of constitutional provisions. “It’s not a mechanical exercise,” she told the senators. In Vidal, however, she was not merely questioning whether Thomas got the history right—she was disputing its relevance altogether.
For Barrett, the names clause—and other restrictions similar to it—could be upheld independently of any historical tradition. “Content-based criteria for trademark registration do not abridge the right to free speech so long as they reasonably relate to the preservation of the mark owner’s goodwill and the prevention of consumer confusion,” she wrote. “A particular restriction will serve those goals if it helps ensure that registered marks actually function as source identifiers.” That sounds suspiciously like the sort of balancing tests that many originalists hope to remove from American constitutional law.
In a separate concurring opinion in the trademark case, Justice Brett Kavanaugh and Chief Justice John Roberts also wrote that something like the names clause “might well be constitutional even absent such a historical pedigree,” citing Barrett’s opinion. Only two of the court’s other members—Justices Samuel Alito and Neil Gorsuch—actually agreed with Thomas on it. But Kavanaugh and Roberts did not offer the comprehensive critique of Thomas that Barrett did, nor did they join her concurring opinion outright.
Looming in the background of Barrett and Thomas’s dispute in Vidal is the Second Amendment. Two years ago, the Supreme Court took originalism to its logical conclusion in New York State Rifle and Pistol Association v. Bruen, its first major Second Amendment case in more than a decade. Thomas, writing for the court, abandoned balancing tests altogether for the individual right to bear arms in favor of a “history and tradition” test.
“To justify its regulation, the government may not simply posit that the regulation promotes an important interest,” he wrote. “Rather, the government must demonstrate that the regulation is consistent with this nation’s historical tradition of firearm regulation. Only if a firearm regulation is consistent with this nation’s historical tradition may a court conclude that the individual’s conduct falls outside the Second Amendment’s unqualified command.”
As I’ve noted a few times since then, the Bruen test has led to chaos in the lower courts. Judges acting in good faith have reached very different conclusions on whether some restrictions have a historical analogue. It has also led to deeply troubling results: The Fifth Circuit Court of Appeals, invoking Bruen, struck down a federal law that bans gun ownership for people under certain types of domestic violence restraining orders.
The justices are currently reviewing that decision in United States v. Rahimi, and a ruling could come any day now. While the court seemed likely to uphold the restriction after oral arguments last fall, squaring such decision with Bruen could prove difficult. If Barrett is more skeptical of the strict history-and-tradition test laid out in Bruen today than when she joined the high court two years ago, Rahimi could result in a much less restrictive test than what it would replace.
While Barrett’s evolution is interesting, it is not sudden. In the 2021 case Fulton v. City of Philadelphia, she rejected efforts to overturn a major precedent that limits Free Exercise Clause claims in federal courts because she found the conservatives’ assertions about historical traditions to be unpersuasive. Earlier this term, Barrett sided with the other eight justices on blocking disqualifications by state-level officials in Trump v. Anderson, but refused to follow the other five conservatives in effectively wiping it out altogether. And in the recent decision on the Consumer Financial Protection Bureau’s funding structure, Barrett joined a concurring opinion by Justice Elena Kagan that politely noted that the agency’s structure would be constitutional even without the historical tradition that Thomas had identified in his majority opinion.
It would also be easy to overstate these differences. Barrett is still a deeply conservative justice: She provided the fifth vote to overturn Roe v. Wade, she consistently votes to limit federal agencies’ regulatory authority, and she sides with her fellow conservatives in most other cases with an ideological divide. As one conservative legal scholar noted the other day, it is extremely unlikely that Barrett will become another David Souter—a Republican-appointed justice who famously drifted from the conservative wing to the liberal wing in the 1990s—anytime soon.
At the same time, the court’s second-newest justice is increasingly willing to part ways with her conservative colleagues when she thinks they are going too far too quickly. This is especially true when the case would be decided on originalist grounds. Even if Barrett’s approach reflects caution instead of moderation, it could be an important factor in future cases—and a potentially decisive one if there’s a 5–4 court again any time soon.
