TMEP 1206.03: When Inquiry is Required

This is the October 2015 Edition of the TMEP

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1206.03    When Inquiry is Required

Generally, if a mark comprises a name, portrait, or signature that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact identify a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name or likeness must be submitted. If there is sufficient evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry.

Full Name. If a mark comprises a full name, e.g., a first name/initial(s) and surname, the examining attorney must issue an inquiry as to whether the mark comprises the name of a living individual, unless it is clear from the record that the name is not that of a living individual. It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making the inquiry. If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.

Example: The mark is STEVEN JONES, the application is silent as to whether this name identifies a living individual, and there is no evidence that the individual is generally known or publicly connected with the business in which the mark is used. The examining attorney must inquire whether the name is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name must be submitted.

Portrait or Likeness. Generally, if the mark comprises a portrait or likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must issue an inquiry as to whether the mark comprises the likeness of living individual, unless it is clear from the record that the likeness is not that of a living individual. It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making the inquiry. If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.

Fictitious Character. The examining attorney should not make an inquiry if it is clear from the record, or from the examining attorney’s research, that the matter identifies a fictitious character. For example, no inquiry is necessary as to whether “Alfred E. Neuman,” “Betty Crocker,” or “Aunt Jemima” is the name of a particular living individual because they are names of well-known fictitious characters. Likewise, no inquiry is necessary as to a design that is obviously that of a cartoon character.

First Name, Pseudonym, Stage Name, Surname, Nickname, or Title. If the mark comprises a first name, pseudonym, stage name, nickname, surname, or title (e.g., “Mrs. Johnson” or “Aunt Sally”), the examining attorney must determine whether there is evidence that the name identifies an individual who is generally known or is publicly connected with the business in which the mark is used and, as a result, the relevant public would perceive the name as identifying a particular living individual. See TMEP §1206.02 regarding the meaning of “publicly connected.”

Whether the relevant public would perceive a first name, nickname, or surname as identifying a particular individual usually depends on whether the particular individual has achieved some public recognition under that name, either generally or in connection with the relevant industry, business entity, goods, or services (e.g., as the inventor of the goods or services, the public face of the company, or a notable user of the products). See In re Sauer, 27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under §2(c) in the absence of consent to register, because BO is the nickname of a well-known athlete and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196 (PTO 1954) (holding registration of REED REEL OVEN barred by §2(c) in the absence of written consent to register from the designer and builder of the ovens, Paul N. Reed).

Typically, in the absence of fame or public recognition, first names, nicknames, and surnames are not necessarily associated with a particular individual. Thus, when the name in a mark is a first name, nickname, or surname, an inquiry is usually unnecessary unless the available information indicates that the relevant public will recognize or perceive the name as identifying a particular individual. See Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988).

Example: The mark is DOCTOR JONES, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name identifies an individual who is generally known or publicly connected with the business in which the mark is used, the examining attorney should not issue an inquiry or §2(c) refusal.

Example: The mark is JOE for cookies, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name identifies an individual who is generally known or publicly connected with the business in which the mark is used, the examining attorney should not issue an inquiry or §2(c) refusal.

Example: The mark is LYNCH’S LIGHTING for lamps, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name identifies an individual who is generally known or publicly connected with the business in which the mark is used, the examining attorney should not issue an inquiry or §2(c) refusal.

Because there must be some indication that the relevant public would actually perceive the name as identifying a particular individual, the mere fact that the name is the first name, nickname, or surname of a living individual associated with the applicant (e.g., an employee, founder, or corporate officer) usually would not, by itself, necessitate an inquiry regarding the name.

Famous Deceased Person or Historical Character. When it appears that the mark comprises the name or likeness of a famous deceased person or historical character, the examining attorney must obtain confirmation from the applicant that the person is in fact deceased, and require that the applicant submit a statement that the name or likeness shown in the mark does not identify a living individual. It is not necessary to print the statement. If the mark comprises a name that is distinctive and well known (e.g., Leonardo da Vinci), the examining attorney may consult with his or her manager regarding foregoing the inquiry. If there is clear evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry. See TMEP §§12.6 and 1206.04(a) regarding marks that consist of or comprise a name, portrait, or signature of a deceased U.S. president with a living widow.

Statement of Record in Prior Registration. If the applicant claims ownership of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the prior registration includes a statement that the name, portrait, or signature is not that of a living individual, the examining attorney may enter the same statement in the record, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation. See TMEP §§813.01(b) and 1206.05.