As stated in section 813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark of the Trademark Manual of Examination Procedure:

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. See TMEP §§1206 et seq. concerning refusal of registration under §2(c) of the Trademark Act, 15 U.S.C. §1052(c), when a mark in an application comprises the name, portrait, or signature of a living individual whose consent to register such name or likeness is not of record.

See TMEP §1206.03 for information about when the examining attorney should issue an inquiry as to whether a name or likeness identifies a particular living individual.

Consent may be presumed where the individual whose name or likeness appears in the mark personally signs the application. See TMEP §1206.04(b) for further information.

If a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods or services, the applicant may satisfy the requirement for a consent statement by claiming ownership of the registration and advising the examining attorney that the consent is of record therein. See TMEP §1206.04(c) for further information.

If a mark comprises the name or likeness of a living individual and consent to register is of record or is presumed from signature of the application (TMEP §1206.04(b)), a statement that the mark identifies a living individual whose consent is of record must be printed in the Official Gazette and on the registration certificate. See TMEP §813.01(a). If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect is printed in the Official Gazette and on the registration certificate. See TMEP §813.01(b).

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  • A particular image, as opposed to a general image, of a human may serve as a valid mark.
    • In re Elvis Presley Enterprises, Inc., Serial No. 74/454,035, (TTAB 1999).
      • This sweeping contention resembles that rejected in Estate of Elvis Presley v. Russen, 513 F.Supp. 1339 (D.N.J. 1981). The estate of the entertainer Elvis Presley argued that his "image and likeness" was a valid mark. The District of New Jersey rejected the claim as too broad. … However, the [district] court went on to note that a particular image of Presley could be a valid mark. …"
  • The photograph of a human, unlike a portrait of a fanciful cartoon character, is not inherently "distinctive" in the trademark sense.
    • In re Elvis Presley Enterprises, Inc., Serial No. 74/454,035, (TTAB 1999).
      • The holding of Estate of Elvis Presley v. Russen was endorsed by the United States Court of Appeals for the Second Circuit in Pirone v. MacMillan, 894 F.2d 579, 13 USPQ2d 1799 (2d Cir. 1990). The Court had the following to say with regard to an attempt to claim trademark rights in all likenesses and images of a particular individual (13 USPQ2d at 1801, emphasis added): "Different photographs of the same person may be markedly dissimilar. Thus a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently "distinctive" in the trademark sense of tending to indicate origin. … Under some circumstances, a photograph of a person may be a valid trademark – if, for example, a particular photograph was consistently used on specific goods. [Plaintiff], however, asserts rights in every photograph of [Babe] Ruth.
  • Case Finding: The likeness and image of Elvis Presley, in general, does not serve as a mark.
    • In re Elvis Presley Enterprises, Inc., Serial No. 74/454,035, (TTAB 1999).
      • This is not the first time that an attempt has been made to claim that the likeness and image of Elvis Presley in general serves as a mark. Such an attempt was rejected in the past, and we, like the Examining Attorney, reject it now. See Estate of Elvis Presley v. Russen, 513 F.Supp. 1339, 211 USPQ 415, 439 (D.N.J. 1981)("The plaintiff asserts that the likeness and image of Elvis Presley serves as a service mark; however, the evidence does not support such a broad proposition. Rather, the record only supports a conclusion that a picture or illustration of Elvis Presley dressed in one of his characteristic jumpsuits and holding a microphone in a singing pose is likely to be found to function as a service mark. This particular image (hereinafter referred to as the ‘Elvis Pose') has appeared in promotional and advertising material for concerts and on record albums.") (emphasis added).
In re Elvis Presley Enterprises, Inc., Serial No. 74/454,035, (TTAB 1999) Grand Total
Pirone v. MacMillan, 894 F.2d 579, 13 USPQ2d 1799 (2d Cir. 1990) 1
Estate of Elvis Presley v. Russen, 513 F.Supp. 1339, 211 USPQ 415, 439 (D.N.J. 1981) 1
Grand Total 2 2

Sec. 1052. Trademarks registrable on principal register; concurrent registration

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--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (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.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

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