No Barack Marks

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.