When applying for federal trademark registration, some rules bite applicants in the butt more often than others. I suspect that the Name Portrait Consent rules are one of those.
Under Section 2(c) of the Trademark Act, no mark shall be registered that, “[c]onsists 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 rules of the game of U.S. Patent and Trademark Office (USPTO or PTO) trademark practice are found in the Trademark Manual of Examining Procedure (lawyers love acronyms, so we call it the TMEP for short). PTO Examining Attorneys — those attorneys who are employed by the US Government to evaluate trademark registration applications to ensure they are suitable for registration — as well as trademark applicants and their representatives all rely on the TMEP to outline the procedures to be followed in the examination of trademark applications. Section 813 of the TMEP states in pertinent part:
Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark
When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow, respectively. The requirement for consent also applies to the registration of a pseudonym, stage name, or nickname, if there is evidence that the name identifies a specific living individual who is publicly connected with the goods or services, is generally known, or is well known in the field relating to the relevant goods or services.
I wrote about this issue recently in the case of a couple unauthorized third party applications to register the mark BLUE IVY CARTER, the name of the newborn celebrity child of rock stars Beyonce and Jay Z. Beyonce’s licensing company ultimately did file its own application to register BLUE IVY CARTER, which also was rejected in part due to the failure to indicate that BLUE IVY CARTER identifies a living individual whose consent is of record. Since BLUE IVY CARTER is a minor child (hell, she’s only one month old!), the laws of the State in which she is domiciled determine who may sign the consent on her behalf, presumably either a parent or legal guardian, who must clearly set forth his or her status as parent or legal guardian.
I also wrote about this in relation to marks that referenced Osama Bin Laden (before he was killed) and I wrote about it in relation to President Obama, who gets special protection not just while he is alive, but also for the duration of the life of his widow. Further, while consent may be presumed where the individual whose name or likeness appears in the mark personally signs the application, a statement that the mark identifies a living individual whose consent is of record still must be printed in the Official Gazette and on the registration certificate.
While trademark mills make trademark law seem simple, there are many nuances that a one-size-fits-all approach fails to take into account. If your trademark identifies a living person, you will need that person’s written consent in order to register your mark.