It’s hard to fathom a time when celebrities – athletes, musicians and movie stars alike – didn’t protect their names by registering them as trademarks. In the age of branding and celebrity pitch-people, it seems like everyone, from Taylor Swift and J.Lo to Tim Tebow and Diddy, is hawking something, but most of all, themselves. Celebrities are very hot (no pun intended) commercial commodities.
Case in point, Blue Ivy Carter, daughter of singer Beyonce and rapper Jay-Z. Not even 6 months old, she’s already the subject of two trademark applications, seeking protection for her name oneverything, from cosmetics and fragrances to keychains, mugs, clothing, toys and sporting goods, to marketing, merchandising and entertainment services, just to name a few. Talk about high expectations.
Registering Trademark Names, Living or Famous
This month we consider the trademark rules regulating the names of living and/or famous individuals. It happens every few months. Someone of little or no import becomes immensely famous overnight and there’s an onslaught of applications to the U.S. Patent and Trademark Office (USPTO).
Just days after Blue Ivy’s birth, a crafty entrepreneur from New Jersey applied to register the name for infant and toddler clothing. The USPTO moved quickly to dismiss the application on the basis of false connection with a famous person whose permission was not of record. Similar circumstances surround Linsanity, Knicks guard Jeremy Lin, and just this week, the mother of Trayvon Martin filed applications with her son’s name, so have a few other people.
The USPTO Standard of Review
So what are the rules governing trademark registration for names of famous and/or living individuals? If a mark comprises a name or likeness of a living individual, the individual’s written consent to register the name or likeness must be submitted. USPTO Examiners are required to make a proactive investigation in this regard and inquire whether the trademark name or likeness is that of a specific living individual. If so, the individual’s written consent must be submitted. The purpose of the inquiry is to avoid the unauthorized registration of an individual’s name or likeness. Consent is also required for registration of a pseudonym, stage name or nickname if the name identifies a specific living individual.
The individual whose name or likeness appears in the mark must personally sign a Statement of Consent to register his or her name or likeness.
False Connection and the Right to Privacy
The rules surrounding the names of famous people have to do with, as noted above, suggesting a false connection with that person and his or her right to privacy. The right to privacy protects a person’s control over his or her identity or “persona.” Someone acquires a protectable interest in a name or designation where the name or designation is unmistakably associated with, and points uniquely to, their personality or “persona.”
This was illustrated most recently by Kim Kardashian, who last year sued retailer Old Navy for using a “Kim K” look-a-like in one of its advertisements.
The trademark definition of “person” includes natural persons, living or dead. Except in the case of deceased individuals, trademark protection extends only as long as there is someone entitled to assert proprietary rights or rights of privacy (e.g., in the case of Trayvon Martin).
To establish that a proposed mark falsely suggest a connection with a person, it must be shown that: (1) the mark is the same as, or a close approximation of, the name or identity of a person; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person; (3) the person named by the mark is not connected with the activities performed by applicant under the mark; and (4) the fame or reputation of the person is such that, when the mark is used with the applicant’s goods or services, a connection with the person would be presumed.
It is worth noting that the law surrounding false connections in trademarks applies even if the trademark is the applicant’s real name. So the USPTO would be able to deny your trademark application even if it comprised your real, legal name. Not so likely in the case of Gwyneth Paltrow. More so if your name is Jennifer Lopez. Of course, the question of whether the goods or services offered in connection with the name are likely to create confusion regarding source or sponsorship also comes into play. So Jennifer Lopez for car tires, possibly okay. Jennifer Lopez for clothing or perfume, not so much.
So there you have it, the basic rules for registering the name of living and/or famous individuals as trademarks. For additional information or for specific inquiries about your trademark, please contact us. We offer free consultations and we’re always happy to hear from you.