April 21, 2015

The Hillary Clinton Brand

by Guest Blogger

Can a name, even a famous politician's name, serve as a trademark?

Any person's name, without more, is not a trademark. A trademark must serve as a source indicator for goods or services. A person's name simply identifies a person.

It is possible that a person's name as used in connection with the sale of goods or services could acquire trademark significance among consumers (think George Foreman® grill). But the USPTO makes clear that any surname that is recognized primarily as a name cannot be registered as a trademark. And any trademark (meaning trademark significance has been established) comprised of a the name of a living individual cannot be registered without her consent.

What about U.S. Presidents? The USPTO has a rule for that. The USPTO must refuse registration of the name, signature, or portrait of a living President or a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

What we are left with is a rule that allows the full name (or initials and last name) of a person who is not a living president or a dead president with a living widow, who provides consent and whose name has become associated with goods and services to serve as a trademark.

One applicant sought unsuccessfully to register OBAMA PAJAMA for -- you might have guessed -- pajamas. Another filed two applications for marks that contained HILLARY CLINTON for use on t-shirts â again the applications were refused.

The fact that Bill Clinton does not own a trademark in his own name does not mean that others are free to use the name to sell goods or services. The body of law known as right of privacy or right of publicity law prevents the unauthorized use of person's "likeness" which is loosely defined as anything that allows recognition of the person. This area of jurisprudence is controlled by state laws, but for the most part prevents the unauthorized use of celebrity and non-celebrity "likenesses" alike.

Last year, the Duane Read grocery store chain tweeted a picture of celebrity Katherine Heigl standing outside one of its stores in New York City carrying two shopping bags accompanied by the text:

Love a quick #DuaneReade run? Even @KatieHeigl can't resist shopping #NYC's favorite drugstore http://bit.ly/1gLHctI "

Heigl sued alleging a knowing violation of her right of publicity. Heigl eventually dismissed the lawsuit in exchange for a contribution by Reade to a Heigl-related charity. But just in case you plan to go after your kid's school for including her picture in the school's advertising campaign photos, remember that although she has the right to control use of her likeness, there are very few of whose likeness is worth six million dollars Heigl demanded.