TMEP 1206: Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent

This is the October 2015 Edition of the TMEP

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1206    Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent

15 U.S.C. §1052   (Extract)

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.

Section 2(c) absolutely bars the registration of these marks on either the Principal Register or the Supplemental Register. See 15 U.S.C. §§1052(c), 1052(f), 1091(a).

The purpose of requiring the consent of a living individual to the registration of his or her name, signature, or portrait is to protect rights of privacy and publicity that living persons have in the designations that identify them. In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1376 n.8, 217 USPQ 505, 509 n.8 (Fed. Cir. 1983); Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 661 (TTAB 1983). See TMEP §1203.03 for a discussion of the right to control the use of one’s identity, which underlies part of §2(a) as well as §2(c).

Section 2(c) does not apply to marks that comprise matter that identifies deceased persons, except for a deceased president of the United States during the life of the president’s widow. See 15 U.S.C. §1052(c); In re Masucci, 179 USPQ 829 (TTAB 1973) (affirming §2(c) refusal of a mark consisting of the name EISENHOWER, a portrait of President Dwight D. Eisenhower, and the words PRESIDENT EISENHOWER REGISTERED PLATINUM MEDALLION #13 on the ground that the mark comprised the name, signature, or portrait of a deceased United States president without the written consent of his living widow).

Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. Specifically, a consent is required only if the individual will be associated with the goods or services, because the person is publicly connected with the business in which the mark is used, or is so well known that the public would reasonably assume a connection. See TMEP §1206.02 for further information.

See TMEP §1206.03 regarding when it is necessary for an examining attorney to inquire of the applicant as to whether a name, signature, or portrait in a mark identifies a particular living individual, and TMEP §§813.01(a)-(c) regarding the entry of pertinent statements in the record for printing in the Official Gazette and on a registration certificate.