Fraudulent Name Trademarks: A Comparison Between the United States, the European Union, the United Kingdom and China (Part II of IV)

Introduction to United States Law:

Particular Living Individual

In the United States, the registration of trademark rights in a living person’s persona requires a written consent from that person. More specifically, TMEP § 1206.03 explains that:

“Generally, if a mark comprises a name, portrait, or signature that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact identify a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name or likeness must be submitted.” (emphasis added)

Where there is “sufficient evidence” that an applied-for mark contains the name, portrait, or signature of a particular living individual, the examining attorney may – in his or her discretion – choose to issue a refusal under Section 2(c) of the Lanham Act instead of an inquiry. This would typically occur when an applicant seeks to register the name of a celebrity or other well-known person.

In other words, when a new application is filed in the United States to register a trademark containing what appears to be the name, portrait or signature of a specific living person, the assigned Trademark Examining Attorney must either raise an inquiry or issue a refusal if a signed consent from such person has not been filed. This is an important tool for combatting “trademark squatters” and other forms of fraud.

Pseudonyms, Stage Names and Nicknames

This consent requirement also applies to applicants seeking to register a pseudonym, stage name, or nickname of a living person. For example, “Lemony Snicket” is the pen name of novelist Daniel Handler – author of the best-selling novel series A Series of Unfortunate Events. Mr. Handler also owns a number of trademark registrations / pending applications for LEMONY SNICKET® in a number of classes. Pursuant to the relevant registrations, each of these includes a disclaimer that:

“The name(s), portrait(s), and/or signature(s) shown in the mark identifies the pseudonym of Daniel Handler, a living individual(s) whose consent(s) to register is made of record.”

Trademark registrations for stage names and nicknames should include a similar disclaimer. For example, trademark registrations covering well known stage names and/or nicknames include:

Reg. No. 3795000 for HULK HOGAN (the stage name of professional wrestler Terry Bollea);

Reg. No.85859513 for BILLY JOEL (the nickname and stage name of the singer William Martin Joel);

Reg. No. 4032178 for ROCKY PATEL (the nickname of cigar company founder Rakesh Patel);

Reg. No. 4708477 for DIDDY (the nickname and stage name for Sean “Puffy” Combs);

Reg. No. 4365015 for SNOOKI (the nickname for Jersey Shore star Nicole Polizzi); and

Reg. No. 4338969 for PELÉ (the nickname of retired soccer superstar Edson Arantes do Nascimento).

Non-Living Persons

Applicants can also secure trademark registration for marks containing a name, portrait or signature which do not identify a particular living individual. Broadly speaking, this category can be divided into:

fictitious names; and
deceased, non-fictitious persons.

With respect to both of these categories, appropriate disclaimers need to be included to make clear that the application does not include the name, portrait or signature of a particular living individual. Under TMEP § 813.01(b), a disclaimer noting that a mark does not identify a particular living individual should be printed on a registration certificate where a name, portrait or likeness “could reasonably be perceived as that of a living individual….” Again, this is required in order to help protect the integrity of the U.S. trademark register – preventing the registration of trademark rights in a living person’s persona without his or her consent.

This is why, for example, Warner Bros. trademark registrations for characters from the Harry Potter series including HARRY POTTER (e.g., Reg. No. 2568097), HERMIONE GRANGER (Reg. No. 2458608) and RON WEASLEY (Reg. No. 2456416) each include a disclaimer that the marks do “not identify a living individual.” This also explains why, when the executor of legendary singer Otis Redding’s estate sought to register Mr. Redding’s nickname, “THE KING OF SOUL”, the estate had to include a disclaimer that the nickname did not identify a living individual (see Reg. No. 4656621).

Presidents of the United States

One final, novel technicality is the law surrounding the registration of a name, portrait, or signature of a deceased president of the United States. During the life of the deceased president’s widow, such a mark can only be registered with the written consent of the widow. See 15 U.S.C. §1052(c).

This means, for example, that it is possible to register marks which include the names of long-dead presidents such as:

GEORGE WASHINGTON COFFEE (Reg. No. 3274104) for coffee in Class 30;

THOMAS JEFFERSON’S CHOCOLATE NIGHTCAP (Reg. No. 5447030) for various chocolate products in Class 30; and

TEDDY ROOSEVELT (Reg. No. 1878799) for steak sauces in Class 30.

This also means that it was not possible to register the mark of deceased president JOHN F. KENNEDY without the consent of his widow, Jacqueline Kennedy Onassis, until her death in 1994.

Conclusion:

United States trademark law and practice places the burden on an applicant to prove the legitimacy of a trademark application containing what appears to be the name, portrait or signature of a living person. If the Trademark Examining Attorney assigned to review a given application believes that a mark could reasonably be perceived as identifying a particular living individual, then he or she will issue an Office Action requiring either the consent of such person or an affirmative statement that the mark does not so identify a particular living individual.

That being said, not all trademark offices follow this same approach. Many offices take a more hands-off approach while others seem openly welcoming to trademark squatters.

Part III of IV in this series evaluates how some European trademark offices – namely the European Union Intellectual Property Office and the United Kingdom Intellectual Property Office – approach trademarks containing indicia of persona.