We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well.

Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important right to federally register trademarks.

What I mean by beginning there is, discreetly-used third party conflicting marks “flying under the radar,” rise to another level of trademark enforcement importance for a trademark and brand owner when the user also seeks federal registration, almost requiring the opening opposition salvo.

Federally-registered trademark owners know the importance of protecting the federal trademark register, because what, and how many similar third party marks, are allowed for registration, can negatively impact the owner’s trademark strength, scope of rights, and enforcement success.

Trademark rights are dynamic, they’ll shrink or grow over time, depending on the landscape at the time of enforcement, so not limiting registration at the USPTO can have more negative impact on strength and scope than an single, discreet, unauthorized use of a confusingly similar mark.

Looking the other way at trademark applications landing within a brand owner’s legitimate scope of protection, indirectly sends the perhaps unintended message to the trademark world, and those who monitor it, that the owner willingly accepts the shrinkage of its trademark rights.

So, serious trademark owners watch for conflicting filings at the USPTO, and stand in the way of registration, until agreement can be reached on how to coexist without a likelihood of confusion.

What I mean by many trademark disputes ending at the TTAB is, most oppositions do not go to final decision, the vast majority settle with a mutually-beneficial coexistence agreement in place.

And, when they don’t, trademark and brand owners — who follow us here — also know that the importance of final TTAB decisions has been raised, as the U.S. Supreme Court recently opened the door to having certain TTAB decisions — through the application of issue preclusion — control the outcome of later federal district court infringement and dilution law suits.

Congratulations to the TTAB on reaching sixty years of dedicated service to trademark and brand owners, as we look forward to the interesting issues likely to be decided in 2018 and beyond.

As I reflect on the more than twenty-five years of my experience before the TTAB, at this point in time — spanning nearly half of the TTAB’s existence — I’ll have to say, the TTAB seems to be carefully and thoughtfully emulating the characteristics of a fine wine as it matures.

What are your predictions of the 2018 decisions that will stand out? Fraud? Functionality? Fame?

Will the TTAB revisit its previous perceived inability to address Constitutional issues, like say, dilution tarnishmentreligious text marks, or application of the Section 2(c) bar to prevent federal registration of political trademark speech, and, if not this coming year, when?

I’m thinking this will be the year of informational and failure to function decisions, how about you?

-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.


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.