Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 25, Issue 6
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WHAT’S WHO’S IN A NAME?”
By Barb Mandell
Three common trademark questions:
1. Can I trademark my own name?
If it’s your name and there are no other obstacles to registration such as confusingly similar third-party registrations, then the answer under the so-called “Names Clause,” of the US Trademark Act[1], is “Yes.”
2. Can I trademark the name of a fictional character?
You may only do so if you are the originator of that character or acquire the rights to it. Thus, you may not trademark Mickey Mouse[2] or Mr. Magoo.
3. Can I trademark the name of a U.S. president or British royal?
The Answer is …
In 2008 an individual filed U.S. trademark applications for the marks, OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA and BARACK’s JOCKS DRESS TO THE LEFT. The preliminary question in the registrability analysis conducted by the U.S. Patent and Trademark Office (“USPTO”)[3] was whether the public would associate those marks with Barack Obama. Referencing the surge in “Obamafications,” defined as “words manufactured from Barack Obama’s name,” the USPTO concluded that, absent written consent from President Obama, they should all be refused registration under the Names Clause for the false suggestion of a connection with the former president.
In 2015, an application to register the mark, ROYAL KATE, came before the USPTO.[4] Although Kate Middleton herself never used “ROYAL KATE,” the USPTO still refused registration, relying on the reasoning in its earlier BAMA decision.[5] The BAMA decision found that, even though the University of Alabama had not registered BAMA as a trademark, the public’s association of BAMA uniquely pointed to the school. Similarly, given the many publications identifying the Princess as ROYAL KATE, the USPTO held that she, like the University of Alabama, was entitled to protection under the Names Clause without having to demonstrate a trademark connection with the involved goods or services.
Next up, Donald Trump. In 2020, the USPTO refused to register the mark TRUMP TOO SMALL, purportedly inspired by a primary debate between Donald Trump and Marco Rubio during the run up to the 2016 election. The Applicant, Steve Elster, Esq., appealed the refusal to the Federal Circuit Court of Appeals, which reversed the USPTO decision and approved registration, holding that in this context, reliance on the Names Clause violated the First Amendment. The Supreme Court in Vidal v. Elster[6] decided otherwise.
In agreeing with the USPTO that TRUMP TOO SMALL was unregistrable, the Court explained that because the Names Clause prohibits registration of marks using another person’s name without consent, it simply protects the person from being identified with goods and services with which they have no connection. Indeed, it concluded, the Names Clause has always co-existed with the First Amendment.
In 2024, in In re Richard Zajkowski, the Board heard argument that the proposed mark, TRUMPINOCCHIO, is a protected parody under the First Amendment and should be permitted to register. The USPTO still rejected the application, noting that in Vidal v. Elster, the Supreme Court squarely rejected any constitutional challenge to the Names Clause.
These cases make clear what the Names Clause requires: before trying to obtain a trademark registration for anything suggestive of any other living human being, first get the human being’s consent.
Barbara Mandell is a partner at the firm. She has over 30 years’ experience in complex litigation. Her practice is focused on litigating, arbitrating and counseling her clients on patent, trademark and licensing matters as well as antitrust law.
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[1] The Names Clause, Lanham Act § 2(c),15 U.S.C. § 1052, prohibits registration of trademarks that consist of a name, portrait, or signature of a particular living individual, except with his or her written consent.
[2] Although the cartoon, “Steamboat Willy,” featuring the original Disney mouse, entered the public domain last year, unlike copyrights, trademarks can last forever.
[3] See In re Hoefflin, 97 USPQ2d 1174, 1177 (2010).
[4] See In re Nieves & Nieves LLC, 113 USPQ 2d 1629 (TTAB 2015).
[5] Bd. Of Trustees of the Univ. of Ala. v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB1986).
[6] Vidal v. Elster, 602 U.S. 286 (2024).
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