by Matt Massari
People often attempt to register the names of public or famous figures as trademarks for use in association with novelty items. Section 2(c) of the Trademark Act “absolutely bars the registration of a designation that identifies a particular living individual absent written consent.” In determining whether a particular living individual with that “name” would be associated with the mark, the U.S. Trademark Trial and Appeal Board (“TTAB”) must consider “(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” In short, this provision of the Act “is intended to protect the intellectual property right of privacy and publicity that a living person has in his/her identity.” But does the President of the United States need such IP and privacy protection, such that one cannot register his/her name as a trademark for novelty items? Yes, according to the TTAB.
In In re Richard M. Hoefflin, 97 USPQ2d 1174 (TTAB 2010) [precedential], the applicant attempted to register the trademarks OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA, and BARACK’S JOCKS DRESS TO THE LEFT for pajamas and briefs. The Examining Attorney issued a Section 2(c) refusal to register the mark, because the record did not include the written consent of President Barack Obama, the living individual allegedly identified in the marks. Though he tried, the Applicant unconvincingly claimed that the terms “Barack” and “Obama” do not refer to any particular individual, and certainly not “the United States President Barack Hussein Obama II.” The Examiner wasn’t convinced, and neither was the TTAB, as it affirmed the Section 2(c) refusal.
Informing its decision, the Examining Attorney for the rejected trademark applications cited a January 2009 news story regarding the “obamification” that the nation had experienced over the year prior to Barack Obama’s election as President. According to the story, the [unofficial] definition of “obamification” is the manufacture of words from Obama’s name. One “early online favorite” was “Obama pajama.” The TTAB concluded that the excerpts cited by the Examining Attorney demonstrate “the obvious – namely, that President Barack Obama is extremely well known.” Each of the names “Barack” and “Obama” is “so closely associated with this particular historic individual that the usages of these names in applicant’s three claimed trademarks will instantly create an association with the President.” Moreover, when an individual is so well known, he or she is entitled to the protection of Section 2(c) without having to show a connection with the involved goods or services. For example, EISENHOWER was refused registration for greeting cards, and PRINCE CHARLES for meat.
The Applicant pointed to various third-party registrations for marks including given names like “George,” “Ronald,” and “Jimmy,” but these names, unlike “Barack” are in common usage. As for the surname, the Examining Attorney showed that, while there are tens (if not hundreds) of thousands of persons having the surnames of the six immediate past presidents, the surname Obama appears in the same directory only 82 times. Rejecting the Applicant’s final assertion that the terms “Barack” and “Obama” are arbitrary and distinctive, the TTAB affirmed the refusal.
Section 2(c) is not limited in scope to full names, but encompasses “surnames, shortened names, nicknames, etc., so long as the name in question does, in fact, ‘identify’ a particular living individual.” With “obamification” in full swing, and the TTAB confirming rejection for registration of the President’s name as a trademark without consent, the White House may need to open its own Presidential licensing division.