United States: What's In A Name? Not A Trademark Registration, At Least

Although a rose "by any other name would smell as sweet," (Romeo & Juliet, Act II, sc. 2, ln 48), there just aren't any trademark registrations to be had in a person's name, at least not without the person's written consent.  So the U.S. Patent and Trademark Office recently reminded a trademark applicant who had applied for a trademark registration for the mark "LOVE TRUMPS HATE," in connection with clothing.

In an Office Action issued last week (Nov. 21, 2016), an examining attorney preliminarily rejected a trademark registration application filed for the mark "LOVE TRUMPS HATE" on the grounds that the mark identifies a particular living individual and the applicant had failed to make a part of his application a formal, written consent to the registration from that living person – in this case, president-elect Donald J. Trump.  (See Office Action, Nov. 21, 2016, Trademark Serial No. 87117865.)

The Trademark Office's response to the application relies on Section 2(c) of the Lanham Act, 15 U.S.C. § 1052(c), which is among the many "statutory bars" that may trip up a business' effort to secure trademark registrations.  In this case, the statutory bar for non-consensual registrations of marks that identify a living individual is one of the provisions of the Lanham Act intended to protect the personal rights of individuals whose names have become famous or otherwise may be the target of appropriation in the marketplace.  (The prohibition against false endorsements in Section 43(a)(1)(A) of the Lanham Act is another such area of protection for people with famous names.)  The statutory bar in Section 2(c) has been invoked in past cases as a barrier to registrations of marks such as "PRINCESS KATE," and "BO JACKSON," and "OBAMA PAJAMA."

In this most recent case, an applicant from New York City sought to register the famous slogan from the Hillary Clinton presidential campaign, in connection with t-shirts, sweatshirts, and caps, on an intent-to-use basis, in an application that was filed with the Trademark Office on July 27, 2016.  At the time of the application, the Clinton campaign had begun using the slogan "Love Trumps Hate" in response to various statements made by the Republican nominee.  Indeed, the last words that Mrs. Clinton uttered in public on the last night of her campaign before Election Day were "Love trumps hate."

Setting aside questions of whether the use of this slogan on t-shirts, sweatshirts, and caps would be a sufficient usage to designate the source or origin of the products – a question bearing on whether the phrase functions as an actual trademark, rather than merely an ornamental slogan – the Trademark Office issued its preliminary denial because, the examining attorney concluded, the phrase "LOVE TRUMPS HATE" "clearly references Donald Trump."  The Trademark Office was not swayed by the fact that this phrase obviously conveys a meaning apart from a reference to Mr. Trump, in that it propounds a worldview in which the emotion of love overcomes those things we may despise.  The Trademark Office pointed out that the statutory bar precludes registration of any mark that identifies a living individual (where the person does not give formal, written consent) if the person identified in the mark "is so well known that the public would reasonably assume a connection between the person and the goods."

Of course, this specific Office Action is only a preliminary refusal to register the mark, and the applicant may well attempt to bring to bear the gamut of First Amendment arguments that certainly protect the applicant's right to criticize Mr. Trump.  Whether those First Amendment rights are sufficient to authorize a trademark registration in this context is a legal question that the Trademark Office likely would not find persuasive, especially in light of the Office's positions in other cases involving the intersection of the Lanham Act's statutory bars and the First Amendment.

Nevertheless, this little anecdote is a cautionary reminder to businesses that their trademarks may not be registrable if they identify a particular living individual, absent a formal written consent from that individual, where the mark's use of a person's name would cause the public to see a connection between the famous person and the goods for which the mark is used.  (Whether such protection of a celebrity's right of publicity is a good or bad thing, or is overreaching, is a legislative question to be addressed to Congress, and in that regard, it is a question likely to go unresolved in this era celebrity-drenched politics.)  Thus, businesses seeking to appropriate the fame of a well-known person's name in their trademarks – even in this context of a double entendre on Mr. Trump's name – would be well advised to think twice, or certainly, to negotiate a consent agreement that avoids the difficulty of having an application for registration denied on the strength of this statutory bar.

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