813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark
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. 15 U.S.C. §1052(c). 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 §§1206–1206.05 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 must inquire 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, a statement that the mark identifies a living individual whose consent is of record must be published in the Trademark Official Gazette and included on the registration certificate. See TMEP §§813.01(a), 1206.04(b). 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 published in the Trademark Official Gazette and included on the registration certificate. See TMEP §813.01(b).
In a TEAS Plus application, if the mark includes an individual’s name or portrait, the initial application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. 37 C.F.R. §2.22(a)(17). If this statement does not appear in the initial application, the applicant must pay a processing fee per class to have the application examined as a TEAS Standard application. 37 C.F.R. §2.22(c). See TMEP §819.01(o) for further information.
See TMEP §813.01(b) and §1206.05 regarding statements that a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual.
813.01 Statement Published in Trademark Official Gazette and Included on Registration Certificate
813.01(a) Name or Likeness Is that of a Living Individual
If a mark comprises the name or likeness of a living individual and consent to register is of record, a statement to that effect must be published in the Trademark Official Gazette and included on the registration certificate. The following are examples of acceptable statements:
The name, portrait, and/or signature shown in the mark identifies a living individual whose consent to register is made of record;
The name shown in the mark identifies a living individual whose consent is of record;
The name "JOHN SMITH" identifies a living individual whose consent is of record;
The likeness (or "portrait" in the mark identifies a living individual whose consent is of record;
The portrait or likeness shown in the mark identifies John Smith, whose consent to register is made of record;
The signature shown in the mark identifies a living individual whose consent is of record;
The signature shown in the mark identifies "JOHN SMITH", a living individual whose consent is of record; or
The name, portrait, and/or signature shown in the mark identifies John Smith, whose consent to register is made of record.
Only matter that actually appears in the mark should appear in capital letters within quotation marks.
Where the mark comprises a portrait, first name, pseudonym, nickname, surname of an individual who is well known in the field relating to the goods or services (see TMEP §1206.03), surname preceded by initials (e.g., "J.C. Jones"), or title of a living individual, the record must clearly identify the actual name of the individual and indicate that the name shown in the mark identifies that individual. A legible signature on the consent statement may in itself be sufficient to identify the individual’s name. If the actual name is unclear, the examining attorney must issue an inquiry. The name may be entered by examiner’s amendment, if appropriate.
Where the mark comprises the name or likeness of a living individual whose consent is of record, the consent statement must always be published, even if the name that appears in the mark is that of the applicant. The statement must also be published if consent is presumed from signature of the application (TMEP §1206.04(b)), or if consent is of record in a valid registration owned by the applicant (TMEP §1206.04(c)).
Where consent is presumed from signature (TMEP §1206.04(b)), the examining attorney must ensure that the required statement is entered in the Trademark database. The examining attorney must also enter a Note to the File in the record indicating that the statement must be published. No prior approval by the applicant or the applicant’s qualified U.S. attorney is required.
The examining attorney must ensure that the Trademark database is updated, if necessary. See TMEP §813.01(c).
813.01(b) Name or Likeness Is Not that of a Living Individual
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 must be published in the Trademark Official Gazette and included on the registration certificate. The statement should read as follows:
The name "__________" does not identify a living individual;
The likeness (or "portrait") in the mark does not identify a living individual; or
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.
The applicant should explain any additional relevant circumstances. For example, if the matter identifies a certain character in literature or a deceased historical person, then a statement of these facts in the record may be helpful, but this information will not be published in the Trademark Official Gazette or included on the registration certificate.
No statement should be published unless the name or portrait might reasonably be perceived as that of a specific living individual. This is true even if the applicant submits an unsolicited statement that a particular name or portrait does not identify a living individual.
Generally, if the name or likeness is such that an inquiry would have been required as to whether it identifies a living individual (see TMEP §1206.03), and the applicant states that the mark does not identify a living individual, then the statement that the name or likeness does not identify a living individual should be published.
The examining attorney must ensure that the Trademark database is updated, if necessary. See TMEP §813.01(c).
If the applicant owns a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the record for the registration contains a statement that the name or likeness is not that of a living individual, the applicant should claim ownership of the registration and advise the examining attorney that the statement is of record therein. The examining attorney may then enter the same statement in the record for the application, even if the applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation.
813.01(c) Updating the Trademark Database
All statements in the Trademark database as to whether a mark comprises the name, portrait, or signature of a living individual whose consent is of record will automatically be published in the Trademark Official Gazette and included on the certificate of registration. Accordingly, when an examining attorney determines that such a statement should be published, the examining attorney must ensure that the statement is entered into the Trademark database. Where consent is presumed from signature (TMEP §1206.04(b)), the examining attorney must also enter a Note to the File in the record indicating that the statement must be published.
When an examining attorney determines that such a statement should not be published, the examining attorney must ensure that the statement is deleted from the Trademark database. The examining attorney must also enter a Note to the File in the record indicating that the statement has been deleted. The document containing the information deleted from the Trademark database will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or registration.