Consists of a name, portrait, or signature of individual or deceased Presiden



As stated in section 1206 Refusal on Basis of Name, Portrait or Signature of Particular Living Individual or Deceased U.S. President Without Consent of Examination Procedure:

Extract from 15 U.S.C. §1052. 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 2(c) of the Trademark Act, 15 U.S.C. §1052(c), bars the registration of a mark that consists of or comprises (whether consisting solely of, or having incorporated in the mark) a name, portrait or signature that identifies a particular living individual, or a deceased United States president during the life of his widow, except by the written consent of the individual or the president's widow.

Section 2(c) absolutely bars the registration of these marks on either the Principal Register or the Supplemental Register.

The purpose of requiring the consent of a living individual to the registration of his or her name, signature or portrait is to protect rights of privacy and publicity that living persons have in the designations that identify them. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982); Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 661 (TTAB 1983). See TMEP §1203.03 for a discussion of the right to control the use of one's identity, which underlies part of §2(a) as well as §2(c).

See TMEP §813 regarding when it is necessary for an examining attorney to inquire of the applicant as to whether a name, signature or portrait in a mark identifies a particular living individual, and regarding the entry of pertinent statements in the record for printing in the Official Gazette and on a registration certificate.

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  • Marks identifying a particular living individual are unregisterable absent written consent of the identified individual.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • As noted by the Trademark Examining Attorney, this subsection of the Lanham Act absolutely bars the registration of a designation that identifies a particular living individual absent written consent.4
        FOOTNOTE 4: § 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register 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.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), prohibits registration of a mark that consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent. The provisions of Section 2(c) are applicable to a "name … identifying a particular living individual," be it a full name, a nickname or a surname, so long as the name points to a particular living person. See In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff'd, 26 F.3d 140, 32 USPQ2d 1479 (Fed. Cir. 1994), and the cases cited therein. Thus, the mark KRAUSE PUBLICATIONS, although it includes only the surname of petitioner, would fall within the provisions of Section 2(c) if petitioner establishes that KRAUSE, as used on or in connection with the goods and services set forth in the involved registration, points uniquely to him "as a particular living individual."
  • This statutory provision does not contemplate protection for someone who coincidentally bears an applied-for name.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • As noted by the Trademark Examining Attorney, this subsection of the Lanham Act absolutely bars the registration of a designation that identifies a particular living individual absent written consent. However, this statutory provision does not contemplate protection for someone who coincidentally bears an applied-for name.
  • Intended to protect the right of privacy and publicity that a living person has in his identity.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • This provision is intended to protect the intellectual property right of privacy and publicity that a living person has in his/her identity. Id. at §§ 10.07, 28.1 and 28.46. Cf. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982); and Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 661 (TTAB 1983).
  • Test to determine whether a particular living person bearing the "name" would be associated with the mark as being used on the goods.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • In determining whether a particular living person bearing the "name" would be associated with the mark as being used on the goods, we must consider (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. See Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979); In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff'd, 26 F.3d 140 (Fed. Cir. 1994); 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 13:37 (4th ed. 2010).
  • Section 2(c) also bars surnames, shortened names, nicknames, etc.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • To the extent that applicant is suggesting that Section 2(c) prohibits only registration of the entire names of individuals, we disagree. Rather, this statutory sub-section operates to bar the registration of marks containing not only full names, but also surnames, shortened names, nicknames, etc., so long as the name in question does, in fact, "identify" a particular living individual. In re Sauer, 27 USPQ2d at 1074.
  • Definition of "identify"
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • A name is considered to "identify" a particular living individual for purposes of Section 2(c) only if the "individual bearing the name in question will be associated with the mark as used on the goods [or services], either because the person is so well known that the public would reasonably assume the connection, or because the individual is publicly connected with the business in which the mark is used." Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979). See also, In re Sauer, supra; and Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999).
  • Being well known in one's own professional or social circles does place a name within the provisions of Section 2(c).
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • In the Martin case, registration of the mark NEIL MARTIN was sought for men's shirts. Opposer Neil Martin, although well known in his own professional and social circles, failed to establish that he was so famous as to be recognized by the public in general or that "he is or ever was publicly connected or associated with the clothing field." Id. at 933. Thus, the Board found that opposer's name did not fall within the provisions of Section 2(c).
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • The opposite conclusion was reached in the Sauer case, where the mark sought to be registered was BO BALL for a sports ball. The Board found the name BO to be the recognized nickname of Bo Jackson, a professional football and baseball star, and further found that he was so well known by the public in general that use of the name BO in connection with a sports ball would lead to the assumption that he was in some way associated with the goods.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • In the Ross case, where the applicant sought to register the mark ROSS for electrochemical analysis equipment, the evidence was found sufficient to establish a Section 2(c) claim. The Board found that opposer, Dr. James W. Ross, Jr., was publicly connected with the electrochemical analysis equipment field and that use of the name ROSS in connection with equipment in the field would lead to the assumption that Dr. Ross was in some way associated with the goods. The evidence showed that the name ROSS was intentionally selected by the applicant to be used as a mark for electrodes because of opposer's development of the product, and the association of opposer with the product was acknowledged by applicant.
  • Petitioner need only demonstrate its name is publicly connected with some, not necessarily all, of the goods and services in a class.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • To prevail under Section 2(c) against a class in respondent's registration, petitioner is not required to demonstrate that he is publicly connected with all of the goods and services listed in the class. Rather, it is sufficient that petitioner has shown that he is publicly connected with at least some of the goods and services in that class. Cf., In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) ["… it is a well settled legal principle that where a mark may be merely descriptive of one or more items of goods in an application but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods for which registration is sought."]; and Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) ["[A] likelihood of confusion must be found if the public, being familiar with appellee's use of MONOPOLY for board games and seeing the mark on any item that comes within the description of goods set forth by appellant in its application, is likely to believe that appellee has expanded its use of the mark, directly, or under a license, for such item."][emphasis in original].
  • Implied consent in a "buy out" agreement sufficient to allow the use a name in a mark.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • In Kaplan, the Board found consent to the use and registration of the mark D.B. KAPLAN'S DELICATESSEN implicit in the terms of a "buy out" agreement. Donald Kaplan, one of the original shareholders, officers and directors of the applicant corporation, entered into a "buy out" agreement that specifically provided that the mark D.B. KAPLAN'S DELICATESSEN and any mark confusingly similar thereto was the property of D.B. Kaplan's Delicatessen, Inc. and further specifically provided that Donald Kaplan could not use D. B. KAPLAN'S DELICATESSEN in any subsequent business venture. The Board held that the record supported a finding that Donald Kaplan consented to applicant's use and registration of the mark D.B. KAPLAN'S DELICATESSEN in that "Kaplan has clearly relinquished to applicant corporation all rights in the mark ‘D.B. Kaplan Delicatessen' which comprises his name and has agreed that he cannot use it in any subsequent business. We think that these provisions are beyond a mere ‘consent to use' situation and that a reasonable reading of this provision clearly implies that consent to applicant's registration of the mark was contemplated." Id. at 344.
  • Mere incorporation of a business does not constitute written consent to use name in a mark.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • In the present case, the incorporation of petitioner's business is not akin to the "buy out" agreement in Kaplan. There is no evidence that petitioner expressly stated that the mark KRAUSE PUBLICATIONS is the property of respondent. Neither did petitioner agree to refrain from use of the name Krause in any subsequent business. Petitioner's mere incorporation of his business does not constitute his written consent to that business's (i.e., respondent's) registration of the mark KRAUSE PUBLICATIONS.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • In In re New John Nissen Mannequins, 227 USPQ 669 (TTAB 1985), the Board considered whether the appearance of one's name in a deed of incorporation constituted the required consent under Section 2(c). The applicant therein, John Nissen Mannequins, appealed from a final refusal to register the mark JOHN NISSEN MANNEQUINS under Section 2(c) of the Trademark Act because the mark consisted of a name identifying a particular living individual, namely John Nissen, whose written consent had not been made of record. John Nissen was a founder of the applicant's predecessor, John Nissen Mannequins. Applicant argued that John Nissen provided his written consent to register the subject mark because John Nissen's name appeared in the deed of incorporation of applicant's predecessor corporation and because applicant's use and registration of the mark in other countries showed implied consent. The Board held that neither the appearance of Mr. Nissen's name in the deed of incorporation of applicant's predecessor nor any consent implied from the issuance to applicant and applicant's predecessor of foreign registrations incorporating the name John Nissen constituted the written consent required by Section 2(c). In the present case, too, the appearance of petitioner's name in documents incorporating his business does not constitute the written consent required by Section 2(c).
  • Consent to register a name as a trademark also implies consent to use of the name.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • FOOTNOTE 3 "On the other hand, a consent to register a name as a trademark, even without a specific reference to a consent to use, would impliedly constitute a consent to use the name, since a federal registration may not be obtained (with an exception not relevant here) or maintained without use."
  • The requirement that pertains to personal names is found in Section 2(c) which requires written consent from living individuals. In those cases where the name does not identify a living individual it is USPTO practice to require a statement to that effect (such as:"The name Cab Calloway does not identify a living individual.")
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • The requirement that pertains to personal names under the Lanham Act is found in Section 2(c) which requires written consent from living individuals.3 In those cases where the name does not identify a living individual it is USPTO practice to require a statement to that effect. For example, the subject application includes the statement "The name Cab Calloway does not identify a living individual."
  • Trade name case not authority for claim of implied consent.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • In the Dovenmuehle case, plaintiffs claimed defendants' use of a trade name violated §43 of the Lanham Act. The issues on appeal were "first, whether the district court correctly held that plaintiffs lacked standing under §43(a) of the Lanham Act to challenge defendants' use of the trade name ‘Dovenmuehle,' and second, whether the district court could properly award defendants the cost of court reporter charges for deposition transcript charges under 28 U.S.C. §1924." Id. at 1551. The case did not involve a Section 2(c) claim and clearly is not authority for respondent's contention that petitioner gave his implied consent to register on the facts of the present case.
  • Consent to use of a person's name does not equate to consent to registration of the name.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • There is a distinction between the right to use a name and the right to register one. A person may give express or implied consent to the use of his name, but that does not necessarily mean that he consents to the registration of it. Thus, even if we were to find that petitioner had impliedly consented to respondent's use of his name in connection with the business as it was conducted at the time petitioner was involved with respondent, such consent would not constitute a consent to register petitioner's name as a trademark.
  • Refusal of registration appriopriate in portions of a name where an individual's name is so well-known, and famous that members of the purchasing public will associate the individual names with the person.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • Applicant also takes the position that the record does not support the conclusion that President Obama is in any way connected with pajamas, sleepwear and underwear. Without this showing, applicant argues, there is no bar under Section 2(c) of the Act. However, we agree with the Trademark Examining Attorney that in making our § 2(c) determination as to these three claimed marks, we find that President Barack Obama, because he is the President of the United States, is so well known and famous that members of the purchasing public will associate the individual names "Barack" and "Obama" as used in applicant's marks with the President and will reasonably assume that President Obama is being identified. Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ at 933 [No evidence to indicate that "Neil Martin" enjoys a reputation of such fame as to be recognizable by the public at large, or that he has been publicly connected with the clothing field]; and Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999) [record fails to show that Dr. James W. Ross, Jr. is so well known that the mark ROSS would lead to an assumption that the mark referred to him, and that he is associated with the electrodes on which the mark ROSS is being used].8
        FOOTNOTE 8: Accord, Laub v. Industrial Development Laboratories, Inc., 121 USPQ 595 (TTAB 1959) [applicant admits an association between John H. Laub and the flowmeter on which it applied the term LAUB]; and Reed v. Bakers Engineering & Equipment Company, 100 USPQ 196 (TTAB 1954) [Paul N. Reed designed and built the involved ovens, and the record shows that registrant's customers will identify Mr. Reed on seeing registrant's REED REEL OVEN mark].
  • Unlike lesser-known individuals, well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence that the consuming public connects them with the goods/services.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • While lesser-known figures (like Mr. Martin or Dr. Ross) may have to show that the consuming public connects them with the manufacturing or marketing of shirts or electrodes, for example, 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 or services. See In re Masucci, 179 USPQ 829 (TTAB 1973) [In spite of any common law rights applicant may have, EISENHOWER for greeting cards was refused on the ground that it consisted of the name of the late President Eisenhower during the life of his widow, and application for registration was filed without her consent]; and In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) [PRINCE CHARLES for meat was refused on the ground it identified a particular living individual whose consent was not of record].
  • Evidence: Press Excerpts can demonstrate that an individual is well known.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • The Trademark Examining Attorney has done an excellent job marshalling a variety of press excerpts to demonstrate the obvious – namely, that President Barack Obama is extremely well known.
  • Evidence: Excerpts from the Social Security Office's popular names website and the Baby Name Wizard website may be used to dempnstrate the popularity of a name.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • FOOTNOTE 9: See evidence attached to the Trademark Examining Attorney's denial of applicant's Request for Reconsideration in Application Serial No. 77632406, dated May 6, 2010, at 12-23. As seen from excerpts from the Social Security Office's popular names website, as well as from the Baby Name Wizard website, the names "Richard," "James," "Ronald," "Bill" or "William" and "George" are highly-ranked and popular names. By contrast, the given name "Barack" is not listed or ranked in the top one-thousand names for any year.
  • Evidence: Objection to a mere list of third-party registrations for names and surnames which have not been made of record is appropriate.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • Applicant has listed a large number of third-party registrations for marks that consist of the first name and the surname of the six immediate past presidents. The Trademark Examining Attorney has correctly objected to applicant's mere listing of registrations for the above referenced marks, which clearly have not been made of record.
  • Case Finding: Acquiescence and other equitable defenses can be applied regarding the right to register a mark containing the opposer's name.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • As the Board noted in Ross, supra at 1276, "in view of the personal nature of [a Section 2(c) claim], we see no overriding public policy or interest which would preclude the assertion of equitable defenses against [such a] claim." We find, however, that respondent herein has no right to raise the equitable defense of acquiescence on the facts of this case, which involves respondent's right to register the mark KRAUSE PUBLICATIONS, rather than its right to use such mark. A predecessor to our primary reviewing Court, the Court of Customs and Patent Appeals, addressed the distinction between the right to register and the right to use in terms of acquiescence in James Burrough, Ltd. v. La Joie, 462 F.2d 570, 174 USPQ 329 (CCPA 1972). There, the applicants began use of the mark SIGN OF THE BEEFEATER for a restaurant in 1957. In 1959 and 1960 the opposer sent letters to applicants requesting that they desist from using the term BEEFEATER for their restaurant. The applicants ignored the letters and indeed expanded their business to at least six restaurants. Opposer took no further action against applicants until 1967. The Board found that opposer had acquiesced in the applicants' use of their mark. On appeal, the court rejected applicant's acquiescence defense, stating: "We have no difficulty in concluding that the board erred in sustaining the applicant's equitable defense in this case. In Salem Commodities, Inc. v. Miami Margarine Co., 44 CCPA 932, 244 F.2d 729, 114 USPQ 124 (1957), the appellee, applicant for trademark registration, urged that appellant, the opposer, was estopped because the applicant's use of the mark was known to opposer for a long period of time before any action was taken to stop that use. The board agreed that the appellant had a good §19 defense to the opposition. While this court proceeded on the basis that appellant's factual assertions were true, it nevertheless reversed the board's decision and held that: Appellant was clearly under no duty to attack appellee's right to use the mark if it did not choose to do so, on penalty of being deprived of the right to oppose an application to register. It could not take the latter action, of course, until after appellee applied for registration and the application was published for the purpose of opposition. Appellant cannot properly be charged with acquiescence in appellee's right to registration until appellant became aware that such a right had been asserted by appellee. [Emphasis in original.] The court in Salem recognized a distinction between the right to use a mark and the statutory right to register which is of significance when § 19 is sought to be relied upon in defense to an opposition. Thus, under § 7(b) of the Lanham Act, 15 U.S.C. 1057(b), registration is more than evidence of the right to use. It is prima facie evidence "of the validity of the registration, registrant's ownership of the mark, and of registrant's exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein." [Emphasis in original.] Moreover, in the present case, appellant may have acquiesced only in the use of the words SIGN OF THE BEEFEATER in conjunction with a picture to identify a restaurant in which no liquor is served and which closes relatively early in the evening whereas registration is sought on the words alone for "restaurant services" broadly. Applicants' equitable standing in an action by this opposer to enjoin their actual use of SIGN OF THE BEEFEATER, if ever brought, would be one matter. However, in this opposition, which is aimed only at preventing registration of the specified mark, a broader and somewhat different goal than enjoining the actual use of the mark, and which is timely brought only after the applicants seek registration, the applicants have not established this opposer's acquiescence in this registration."
  • Case Finding: Examples of evidentiary support of a name being well known by the public.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • Case Finding: In the present case, the record fails to establish that petitioner is so well known by the public in general that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed. Petitioner has not demonstrated that his renown in the fields of business, numismatics, car collecting, and publishing is at a level anywhere near that of Bo Jackson in the Sauer case. The evidence establishing the fame of Bo Jackson consisted of Bo Jackson baseball and football cards; advertisements for Bo Jackson figurines and toys; a copy of a tag from a Bo Jackson model baseball glove; a copy of a Cheerios cereal box referring to Bo Jackson; and copies of magazines with articles about and cover references to Bo Jackson. These are the kinds of items that are purchased by a substantial portion of the public. Also, it is common knowledge that the general public is exposed to professional athletes through television and radio broadcasts of games and other sports programming. In the present case, the fields of numismatics, car collecting, and publishing of hobby magazines are niche markets and there is insufficient evidence to establish that petitioner's activities in these fields are well known to the general public. Further, petitioner's philanthropic activities clearly are more local than national in scope, and it is unlikely that the public in general knows of petitioner as a result of these activities.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • Additionally, it is significant that respondent produced no witnesses or other evidence to show that the name "Krause" appearing in KRAUSE PUBLICATIONS INC. refers to someone other than petitioner in the field of numismatics, car collecting and publishing activities related thereto. In Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196, 199-200 (Exam'r in Chief 1954), Paul Reed filed a petition to cancel the registration of the mark REED REEL OVENS for baker's ovens. The evidence showed that the name "Reed" in the mark REED REEL OVENS was selected because of its reference to petitioner Paul Reed, the engineer who designed and built the ovens, and that Mr. Reed was initially active in the partnership that sold the ovens. The Examiner in Chief stated that: "It seems to me that "Reed" on the ovens also identified petitioner to the customers at least during the first several years of the business in view of the personal contact of the petitioner with the customers in installing and servicing the ovens. Under these circumstances, it seems to me that the burden of proof is upon the respondent to show that Reed does not refer to and identify petitioner . . . and respondent produced no witnesses to show that the name Reed appearing in ‘Reed Reel Ovens' does not refer to and identify petitioner in the particular trade. Id at 199-200."
  • Case Finding: To compare, as applicant has attempted, the much more unusual given name "Barack" to the popular first names of immediate past presidents is on its face immediately distinguishable.
    • In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).
      • Specifically, applicant devotes much of his argument to comparing his applied-for marks to marks in third-party applications that issued into registrations despite potential Section 2(c) bars. However, to compare, as applicant has attempted, the much more unusual given name "Barack" to the popular first names of immediate past presidents is on its face immediately distinguishable. Unlike the name "Barack," the given names "George," "Bill" (or "William"), "Ronald," "Jimmy" and "Richard" are consistently among the most popular male names in the country.9
In re Richard M. Hoefflin, Serial Nos. 77632391, 77632400 and 77632406, (TTAB 2010).Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005)Grand Total
Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999) 2
In re Sauer, 27 USPQ2d 1073 (TTAB 1993), affÕd, 26 F.3d 140 (Fed. Cir. 1994) 2
Dovenmuehle v. Gilldorn Mortgage Midwest Corp., 871 F.2d 697, 10 USPQ2d 1550 (7th Cir. 1989) 1
In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), affÕd 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) 1
In re New John Nissen Mannequins, 227 USPQ 669 (TTAB 1985) 1
Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 661 (TTAB 1983) 1
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), affÕg 213 USPQ 594 (TTAB 1982) 1
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) 1
Martin v. Carter Hawley Hale Stores Inc., 206 USPQ 931 (TTAB 1979) 2
In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) 1
In re Masucci, 179 USPQ 829 (TTAB 1973) 1
James Burrough, Ltd. v. La Joie, 462 F.2d 570, 174 USPQ 329 (CCPA 1972) 1
Laub v. Industrial Development Laboratories, Inc., 121 USPQ 595 (TTAB 1959) 1
Salem Commodities Inc. v. Miami Margarine Co., 44 CCPA 932, 244 F.2d 729, 114 USPQ 124 (1957) 1
Reed v. Bakers Engineering & Equipment Company, 100 USPQ 196 (TTAB 1954) 1
Grand Total91120

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.