United States of America
In In re Hoefflin (Serial Nos 77/632,397, 77/632,400 and 77/,632,406), the Trademark Trial and Appeal Board (TTAB) has affirmed the decision of a trademark examining attorney to deny three applications based on failure to obtain consent of a living individual.

On December 12 2008 the applicant filed three intent-to-use applications for the following trademarks:
  • OBAMA BAHAMA PAJAMAS and OBAMA PAJAMA for pajamas in Class 25 of the Nice Classification; and
  • BARACK’S JOCKS DRESS TO THE LEFT for boxer briefs, briefs, pajama bottoms, pajamas and sleepwear in Class 25. 
The examining attorney refused the applications based on Section 2(c) of the Lanham Act, 15 USC §1052, which states that:

[n]o 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]onsists 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.” 

Because the applicant failed to obtain the consent of Barack Obama, the examining attorney refused the applications. 

The applicant appealed the refusal. The TTAB noted that, while the Lanham Act bars registrations identifying individuals without written consent, the statute does not contemplate protection for a person that coincidentally shares a name with an applied for mark. To determine whether a living person would be associated with an applied for mark, the TTAB applied the following standard: “(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” 

The TTAB considered the record compiled by the examining attorney, including a news story published only a few weeks after the date the applications were filed recognising an 'Obamification' trend that swept the United States during and after the election cycle, in which many words were manufactured from the president-to-be’s name. The article went on to state that an early favourite was rhyming the words 'Obama' with 'pajama'. The examining attorney also submitted an entry from the online Urban Dictionary for 'Obamapajamas'.  

The applicant took the position that the terms 'Barack' and 'Obama' used in the mark did not represent any particular individual or the president of the United States. The applicant also argued that President Obama was in no way connected to pajamas, sleepwear or underwear. He submitted definitions for the name 'Obama' meaning 'to lean' in another language, and the name 'Baruch' meaning 'blessed' in Hebrew. He highlighted the fact that many past president’s names were incorporated into trademarks on the register absent consent from those individuals. 

The TTAB considered the evidence submitted by applicant and determined that the timing of the filing of the applications during the election and presidency of Barack Obama, and the phenomenon and renown of Obama’s name during this time period, left little doubt that purchasers would immediately recognise the marks to be affiliated with President Obama (regardless of the intent of the applicant). The TTAB went on to state that “well-known individuals, such as celebrities and world-famous political figures, are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods and services”.

To the applicant’s argument that Section 2(c) bars only the registration of entire names, the TTAB clarified that:

this statutory sub-section operates to bar the registration of marks containing not only the full names, but also surnames, shortened names, nicknames, etc, so long as the name in question does, in fact, identify a particular living individual.”

The TTAB addressed the applicant’s arguments regarding prior registrations of certain past president’s names by citing the frequency with which those names - George, Bill (or William), Ronald, Jimmy and Richard - are used in the United States in comparison to the name Obama. The TTAB noted these names were “consistently among the most popular male names in the country” and occurred in the tens (if not hundreds) of thousands, while only 82 references to the surname Obama were discovered in the directory. 

The TTAB concluded that the three marks would be directly associated with Barack Obama by consumers and, accordingly, absent his consent, the marks had been appropriately refused by the examining attorney. 

Ron N Dreben and Monique E Liburd, Morgan Lewis & Bockius LLP, Washington DC 

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