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Trademarking a Name and the Right of Publicity

Suppose that you want to register a trademark that incorporates a name of a person to identify the source of goods or services for your business.  Should you register your trademark with the U.S. Patent and Trademark Office (USPTO)?  What about the right of publicity of the individual?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer may be YES! depending on the specific facts regarding the person.

Section 2(c) of the Trademark Act (15 U.S.C. § 1052) states in part:

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 1206 of the Trademark Manuel Examining Procedure (TMEP) incorporates Section 2(c) or 15 U.S.C. § 1052. Without written consent, the USPTO will bar the registration of these marks under Section 2(c) on either the Principal Register or the Supplemental Register. See 15 U.S.C. §§1052(c),  1052(f)1091(a).  However, Section 2(c) does not apply to marks that identify 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).

Suppose the person is a living individual.  The next question is whether their written consent is required. Section 813.01(a) of the TMEP states:

When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow, respectively.  The requirement for consent also applies to the registration of a pseudonym, stage name, or nickname, if there is evidence that the name identifies a specific living individual who is publicly connected with the goods or services, is generally known, or is well known in the field relating to the relevant goods or services.

If your mark includes a name, portrait, and/or signature that could reasonably be perceived as that of a particular living individual, then you must provide the USPTO information regarding whether such name, portrait and/or signature in fact identifies a particular living person. If it does, you must provide both (1) a statement that the name, portrait, and/or signature identifies a living individual whose consent is of record, and (2) a written consent personally signed by the individual named or shown in the mark.

An individual’s right of publicity allows the person to control the commercial use of his or her identity.  There is no federally protected right of publicity.  The protected right of publicity is a state right and each state has created its own protected right of publicity.  Therefore, the USPTO requires written consent from a living person whose name is in a mark prior to registration to protect the person’s right of publicity.

Can a deceased person have a right of publicity?  While most states are fairly consistent in their protected right of publicity as it applies to living individuals, each state varies as to the level of protection for a postmortem right of publicity.  Some states allow the right to extend beyond death, while others do not.  The postmortem right of publicity may be provided explicitly in a statute or only under common law.  Even is a state allows the right of publicity to extend beyond death such right may be limited in time.

Since trademarks can contain a person’s name with their consent, you should file an application to register the trademark as soon as possible.  You should be able to have the trademark application examined and obtain a registration.  However, if the person is deceased, you may want to consider whether they have a postmortem right of publicity before you file, which will depend on state law.  If the postmortem right of publicity does not apply, no consent is needed from the estate of the deceased person.  However, if the postmortem right of publicity does apply, you should seek consent from the estate of the deceased person before filing for trademark registration.  Although the consent of a deceased person is not required to file a trademark application, you want to minimize any liability for any postmortem right that may apply.

Thus, a name of a person can be trademarked with the USPTO if they are a living individual whose written consent is made of record or if the person is deceased.  In addition, you may be able to trademark the name of a deceased person with the USPTO.  However, the deceased person may have a postmortem right of publicity.  If the state law does not apply or enough time has elapsed, you may not have liability if you attempt to register their name for a trademark with the USPTO.