What It Looks Like To Receive A Name of Individual Office Action

An office action based on the §2(c) of the Trademark Act arises when the United States Patent Trademark Office Examining Attorney believes the mark application appears to include the name of an individual in the mark.

Here’s the relevant passage from the §1052(c) of the Trademark Act:

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.

The office action when issued will usually say something like this:

NAME OF AN INDIVIDUAL Applicant must clarify whether the name [YOUR TRADEMARK] in the mark identifies a particular living individual. See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.

In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent. See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).

Why Is The “Name of Individual” an Important Trademark Protection?

Protecting an individual’s name from being trademarked by a third party is consistent with the core concepts of right to privacy and right to publicity. The name of an individual, or a moniker they are recognized by, is commercially valuable and potentially personally invaluable to the individual. Furthermore, an individual need not even place their name in the commercial marketplace to be afforded protections under the Trademark Act from a third party. (See Notre Dame, 703 F.2d at 1375, 217 USPQ at 508).

Furthermore, there are cases on point where an applicant slightly changes a name from the known name to something confusingly similar and the registration is ultimately blocked. For example, the applied-for marks OBAMA PAJAMA and OBAMA BAHAMA PAJAMAS were blocked from registration absent the consent of President Barack Obama due to the fact that the individual, President Obama, was so well known that a connection would be assumed. Similarly, the mark ROYAL KATE was blocked from registration since there is a presumption that Kate Middleton had sufficient fame that a connection would be presumed between Kate Middleton and the mark ROYAL KATE. The registration was blocked since there was no consent from Kate Middleton.

How Do You Overcome a “Name of Individual” Office Action Cited Under Trademark Act §2(c)?

Crafting and submitting a response to an Office Action should be done by a licensed attorney who can assess the response as part of a greater strategy for trademark protection. The most difficult part about responding to a “Name of Individual” Office Action is ensuring that the correct information is included in the consent statement.