No Barack Marks

Posted by | December 13, 2010 | General | One Comment

Who knew Presidential jammies could be such a hit?  Not only are these no longer available (probably since ’08), but . . .

on Friday, December 10, 2010, the Trademark Trial and Appeal Board issued a precedential opinion (or as John Welch quipped on the TTABlog, its 44th Presidential Opinion) upholding the PTO Examining Attorney’s refusal to register OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA and BARACK’S JOCKS for pajamas & briefs.

The PTO denied registration of OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA and BARACK’S JOCKS based on Section 2(c) of the Lanham (Trademark) Act, which states:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —  . . .  (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. . .

The PTO rejected each of the applications because it did not contain the requisite written consent from President Obama, the “particular living individual” whose name comprised a part of each of the applied-for marks.  Amazingly, the applicant, civil litigation attorney, Richard Hoefflin, claimed that the marks “did not identify a living individual,” therefore President Obama’s consent was not needed.

The TTAB order states that Section 2(c) of the Lanham Act “absolutely bars the registration of a designation that identifies a particular living individual absent written consent.”  This provision of the Act is designed to protect the rights of privacy and publicity (tomorrow’s topic!) that we living individuals each possess.  Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual.  To determine whether the named individual would be associated with an applied-for mark, the PTO asks: is the person named (1) so well known that association is reasonable to presume or (2) connected with the business with which the mark is used?  A “yes” response means no registration without signed consent.

It’s hard to imagine that anyone would argue that BARACK and/or OBAMA don’t identify our current president.  However, that’s what attorney/applicant Hoefflin did.  Since President Obama is so well known, the PTO found that consumers reasonably would presume a connection between the President and the goods, thus the President’s consent is needed in order for the mark to become registered.  It also didn’t help that Mr. Hoefflin filed three applications, concurrently — two containing the President’s surname and one containing his first name — weeks before the President’s Inauguration.

Brand Geek Takeaway: If your mark consists — in whole or in part — of the name, portrait or signature (really, any resemblance) of a living individual, then that individual’s written consent is required in order to federally register your mark.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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