If you’ve paid attention to any billboards in the Twin Cities over the last year or so, you’re probably wondering why I haven’t discussed this one yet, knowing my passion for billboard ads:

The Kris Lindahl billboard ads — especially this one —  are hard to ignore. They are almost as ubiquitous as a certain iPhone Xs ad. Plus, this one strikes a pretty distinctive wingspan pose.

Apparently there is an art or science behind poses for real estate agents, but as far as I can tell from a Google search, none appear to cry out “wingspan” like Kris’ does, so is the pose ownable?

Seems pretty clear from how his name is used as a mark on this billboard that Mr. Lindahl’s eponymous Lindahl Realty firm is on the way to registering his personal name as a service mark.

While it isn’t always a cake walk, in obtaining federally-registered service mark rights in a personal name, what I’d really like to see Mr. Lindahl attempt next is registration of his wingspan pose.

What would you rate his chances, putting aside whether you like the above billboard ad or not?

How much do I believe in federal registration of trademarks and brand names? Well, this much:

I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.

That mindset helps explain why we stuck with the suggestive name of this blog, even after the experts recommended against it several times, for SEO and other reasons. They do agree now.

Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:

Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.

A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:

“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”

“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”

Fortunately, I’m surrounded by really bright, passionate intellectual property and trademark attorneys, and in this case, our Tucker Chambers came to the rescue, with this winning response.

And, thankfully Tucker had some decent facts to work with, especially given kind commentary of some generous giants from both the legal and marketing fields, two of our core audiences.

Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.

I’ve never professed to resemble a purple cow, but my mother and father did teach me to follow the beat of my own drum, after taking in a variety of different perspectives to settle on my beat.

So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.

Keep in mind, personal brands can go beyond an actual name to embody a non-verbal image too, where consent of the individual so identified is of record at the USPTO, hello Ralph Lauren:

Personal brands also may include nicknames, like Mr. Wonderful aka Kevin O’Leary from Shark Tank fame, who is seeking registration of Mr. Wonderful for roasted nuts, hello Wonderful:

 

So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.

-Wes Anderson, Attorney

At this early stage in the 2016 election cycle, it’s difficult to predict much of anything, but if Hillary Clinton wins the Democratic nomination and, ultimately, the presidency, I can say for certain it will have an unprecedented effect on a lesser-known quirk of trademark law.

Many practitioners and laypersons are familiar with the provisions of Section 2(c) of the Trademark Act, which prohibits registration of a mark that “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). This, of course, is to prevent others from trafficking in someone else’s personal name, and confusing consumers as to source or affiliation. It also is an absolute bar to registration – the Supplemental Register is not an option, as it would be for descriptive marks.

whitehouse_historypg

Less frequently cited is the remainder of the statute, which provides additional protection for former Presidents of the United States:

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.

For any other individual, right up to the Vice President, a personal name is no longer barred from registration under Section 2(c) if that person is deceased. But for Presidents, the statute provides protection not just during each person’s life, but after the President’s death and “during the life of his widow.” This, presumably, is to provide additional protection for a name that will remain famous and well-recognized long after that former President passes away.

You may see where I’m going with this – Bill Clinton, of course, is already protected under Section 2(c) as he is a living individual. Given his notoriety, there no need to look far for examples. Back in 2008, an enterprising individual’s application for BILL CLINTON, THE FIRST MAN was summarily refused by the PTO under Section 2(c). This means that, should the former President pass away before his wife, Hillary, similar CLINTON marks would be barred from registration during her life.

But if Hillary wins the Presidency, the Clintons will effectively enjoy double protection. Bill Clinton and Hillary Clinton would now take the role of both president and “widow,” or “widow[er]” depending on how things shake out. This would, of course, be the first time that Section 2(c) could be prospectively applied in such a way – one former President’s lifetime protecting another former President’s personal name. (One could argue that John Quincy Adams may have helped protect his father John Adams, but, alas, the Lanham Act was not around in 1825).

Also perhaps worthy of note are the male-oriented pronouns and names – “his” and “widow” – though these of course date back to the statute’s enactment in 1946 and would have no substantive effect if a woman is elected President. Still, if Congress has some spare time on its hands, perhaps Section 2(c) would be ripe for amendment – just to be sure.

-Wes Anderson, Attorney

First off, hello DuetsBlog! I’m delighted to join Steve and the rest of the team here, and I hope I can add to the excellent content that authors past and present have brought to the site.

I’ll start my post with a statement that’s obvious to all trademark lawyers: brands can be valuable assets. One reason for this is that many customers form a lifetime devotion to their favorite brand, and they pass that devotion on to their children.

This is particularly true for food. I know that when it comes to pickles, I am loyal to Claussen, both because my parents bought them exclusively when I was a child and because the company’s headquarters is in my childhood home of Woodstock, Illinois.  It’s a one-two punch that Vlasic just can’t match.

Two brave souls in France took this sort of brand loyalty even further — by attempting to name their newborn daughter “Nutella,” after the famous chocolate-hazelnut spread of questionable nutritional value.

Unfortunately for them (or perhaps fortunately for the daughter), the local court in France blocked the new moniker, ordering that the child be named “Ella” instead.  The judge stated that “Nutella” is a trade name, and as such “it is contrary to the child’s interest to have a name that can only lead to teasing or disparaging thoughts.”  Clearly, this judge prefers jam on his toast.

If only the parents lived in the United States, then they may likely have realized their dream. While many European countries place various restrictions on baby names, American parents may generally use a trademark as a personal name, so long as it is a word mark and both parents consent to the name.  Brand loyalty may have some limits abroad, but the courts on our shores would hardly object to baby Nutella.

That said, American courts have stepped in when the name is not actually a word (the Roman numeral “III”) or, more controversially, on religious grounds (“Messiah”).

Of course, personal names are not impervious to trademark infringement. Personal names may not be used in a confusingly-similar fashion to a senior trademark, particularly a famous mark. And marks that are “primarily merely a surname”  are generally not registrable in the U.S. This is bad news for the Marriotts of the world who want to start a family hotel chain, or a Mott with a breakthrough recipe for apple sauce (as opposed to baby food).

As for baby Ella: if there’s a silver lining in all this, it’s that she will have far less trouble starting up her own hazelnut spread business.