The Trademark Office has many potential reasons for rejecting an application. When there is an issue with an application, it will issue an office action. If a response is not filed to address the office action, the application goes abandoned. In this blog post, I want to discuss one of the many issues an application might face: an inquiry regarding a particular living individual.
Inquiry Regarding the Name/Signature/Portrait of a Particular Living Individual
This issue deals with the right of privacy that a person has, as well as their right to control the public use of their name and likeness. Those are rights that we obviously want people to have. So when the Trademark Office thinks someone has applied to register the name, signature, or portrait of a person, it will generally ask if that portion of the trademark identifies a particular living individual. In response, the applicant will need to (truthfully) state whether that is the case.
Keep in mind that this issue deals with a particular living individual. This issue comes up when someone applies to register a full name, or sometimes just a first name. It is generally not triggered when the trademark only includes a surname, because in most cases a surname by itself doesn’t identify any one particular person. However, it can be triggered by a surname in some cases where the surname points directly to one (typically very famous) person (e.g. Obama or Trump). Also, the issue is not strictly limited to identifying someone through their legal name. Instead, it can apply when the trademark includes a nickname, stage name, pseudonym, or title (e.g. Big Papi, Nelly, or Queen Elizabeth).
Although the use of a person’s name is usually the trigger for this issue, there are also prohibitions on use of a particular living individual’s signature or portrait. Since these are unique to the individual, there is typically less of a question as to whether they point to a specific person.
What If the Answer to the Inquiry Is “Yes”?
If you have received such an inquiry, you will need to respond to it. If your trademark does not identify a particular living individual, you can file an office action response indicating that. However, if it does then you must obtain the consent of that person in order to have your application move forward. Otherwise, the the Examining Attorney will issue a rejection under Trademark Act Section 2(c) for failure to provide the consent to register the name/signature/portrait of a particular living individual.
If you are the individual, or are registering the name/signature/likeness with the person’s permission, then you will need to prepare and file a name consent document. There are certain statements that have to be in the document in order for the Trademark Office to accept it.
This will be an insurmountable obstacle for many applicants. For example, if your trademark includes BIDEN, it is highly unlikely that you will get the necessary consent that you need from the President. Assuming that you are able to obtain the necessary consent, you can submit that as part of your office action response, and the Examining Attorney will accept it as a response to the inquiry, or withdraw their Section 2(c) refusal if they have already issued that.
Not Sure Whether Your Trademark Identifies a Particular Living Individual?
Whether you are planning on filing a new application, or have already received an inquiry/rejection related to a particular living individual, I would be happy to discuss your situation and to assist you with it. To get started, please feel free to call me at (480) 360-3499, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.