1206 Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent
15 U.S.C. §1052 (Extract)
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), absolutely bars the registration of these marks on either the Principal Register or the Supplemental Register. See 15 U.S.C §1052(f), 1091(a). The provision "recognizes the right of privacy and publicity that a living person has in his or her identity and protects consumers against source deception." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *10-11 (TTAB 2020).
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." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *7-8 (citing In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010) ; Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979)); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1376 n.8, 217 USPQ 505, 509 n.8 (Fed. Cir. 1983). See TMEP §1203.03 regarding of the right to control the use of one’s identity, which underlies part of §2(a) as well as §2(c).
Section 2(c) does not apply to marks that comprise matter that identifies deceased persons, except for a deceased president of the United States during the life of the president’s widow. See 15 U.S.C. §1052(c); In re Masucci, 179 USPQ 829 (TTAB 1973) (affirming §2(c) refusal of a mark consisting of the name EISENHOWER, a portrait of President Dwight D. Eisenhower, and the words PRESIDENT EISENHOWER REGISTERED PLATINUM MEDALLION #13 on the ground that the mark comprised the name, signature, or portrait of a deceased United States president without the written consent of his living widow).
"Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8. Specifically, a consent is required only if the individual bearing the name in the mark will be associated with the mark as used with the goods or services because the person is either (1) so well known that the public would reasonably assume a connection between the person and the goods or services, or (2) publicly connected with the business in which the mark is used. Id. at *8 (citing In re Hoefflin, 97 USPQ2d at 1175-76; Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); Martin, 206 USPQ at 933)). See TMEP §1206.02 regarding whether consent is required.
See TMEP §1206.03 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 §§813.01(a)-(c) regarding the entry of pertinent statements in the record for publishing in the Trademark Official Gazette and including on a registration certificate.
1206.01 Name, Portrait, or Signature of Particular Living Individual
Trademark Act §2(c), 15 U.S.C §1052(c) explicitly pertains to any name, portrait, or signature that identifies a particular living individual, or a deceased president of the United States during the life of the president’s widow.
Does Not Have to Be Full Name. For purposes of §2(c), a "name" does not have to be the full name of an individual. "Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the particular name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (holding registration of the marks TRUMP-IT MY PACKAGE OPENER MAKE OPENING PACKAGES GREAT and design and TRUMP-IT MY PACKAGE OPENER and design barred under §2(c) in the absence of consent to register, because they created a direct association with President Donald Trump); see Mystery Ranch, Ltd. v. Terminal Moraine Inc., 2022 USPQ2d 1151, at *13-16 (TTAB 2022) (holding registration of the mark DANA DESIGN and design barred under §2(c) in the absence of consent to register because it created a direct association with Dana Gleason, opposer’s owner and backpack designer who is well known by the relevant consuming public and publicly connected with the goods in the relevant marketplace, and for which opposer was in privity and had a cognizable right to assert Gleason’s rights); In re Hoefflin, 97 USPQ2d 1174, 1177-78 (TTAB 2010) (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT barred under §2(c) in the absence of consent to register, because they created a direct association with President Barack Obama); In re Sauer,27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under §2(c) in the absence of consent to register, because BO is the nickname of Bo Jackson, a well-known athlete, and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); In re Steak & Ale Rests. of Am., Inc., 185 USPQ 447, 448 (TTAB 1975) (holding registration of the mark PRINCE CHARLES for fresh and cooked meat barred under Section 2(c) in the absence of consent to register, because the mark created a direct association with Prince Charles, a well-known member of the English royal family.
Name Could Refer to More Than One Person. The fact that a name appearing in a mark may be the name of more than one person does not negate the requirement for a written consent to registration if the mark identifies, to the relevant public, a particular living individual who is well known or is publicly connected with the business in which the mark is used, or a deceased U.S. president whose spouse is living. See Steak & Ale Rests., 185 USPQ at 447 ("Even accepting the existence of more than one living ‘PRINCE CHARLES’, it does not follow that each is not a particular living individual.").
Portraits. Cases involving portraits include In re McKee Baking Co., 218 USPQ 287 (TTAB 1983) (involving a mark consisting of a sign on which the portrait of a young girl appears below the words LITTLE DEBBIE); In re Masucci, 179 USPQ 829 (TTAB 1973) (involving a mark containing the name and portrait of President Eisenhower); Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30 (Comm’r Pats. 1937) (involving marks containing the name and portrait of petitioner).
1206.02 Connection with Goods or Services
Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual bearing the name in the mark will be associated with the mark as used with the goods or services, because the person is either: (1) so well known that the public would reasonably assume a connection between the person and the goods or services, or (2) publicly connected with the business in which the mark is used. In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (citing In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ'ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979)). For purposes of Trademark Act §2(c), 15 U.S.C §1052(c), "publicly connected" means that the named individual is associated in some significant manner with the applicant, is actually connected to the goods or services at issue, or is well known in the relevant field of goods or services, and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual. See Mystery Ranch, Ltd. v. Terminal Moraine Inc., 2022 USPQ2d 1151, at *15-16 (TTAB 2022) (holding registration of DANA DESIGN and design barred by §2(c) in the absence of written consent from Dana Gleason, opposer’s owner and backpack designer who is well known by the relevant consuming public and publicly connected with the goods in the relevant marketplace by his ongoing affiliation with opposer’s business in that field); In re Sauer, 27 USPQ2d at 1075 (holding registration of a mark containing BO, used in connection with a sports ball, barred by §2(c) in the absence of written consent to register from a well-known athlete nicknamed BO, Bo Jackson), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196 (PTO 1954) (holding registration of REED REEL OVEN barred by §2(c) in the absence of written consent to register from the designer and builder of the ovens, Paul N. Reed); see also TMEP §1206.03. Although there may need to be evidence to show that the consuming public connects lesser-known figures with the manufacturing or marketing of the goods or services at issue, "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." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (citing In re Hoefflin, 97 USPQ2d at 1177; In re Masucci, 179 USPQ 829, 830 (TTAB 1973)).
The Trademark Trial and Appeal Board stated the following in Martin, 206 USPQ at 933:
[Section] 2(c) was not designed to protect every person from having a name which is similar or identical to his or her name registered as a trademark. Such a scope of protection would practically preclude the registration of a trademark consisting of a name since in most cases there would be someone somewhere who is known by the name and who might be expected to protest its registration. Rather, the Statute was intended to protect one who, for valid reasons, could expect to suffer damage from another’s trademark use of his name. That is, it is more than likely that any trademark which is comprised of a given name and surname will, in fact, be the name of a real person. But that coincidence, in and of itself, does not give rise to damage to that individual in the absence of other factors from which it may be determined that the particular individual bearing the name in question will be associated with the mark as used on the goods, either because that 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.
In Krause, 76 USPQ2d at 1907-11, the evidence of record showed, among other things, that the cancellation petitioner, Chester L. Krause, formed a sole proprietorship under the name "Krause Publications" for the purpose of publishing coin collecting publications; was subsequently associated for almost fifty years with the respondent Krause Publications Inc., a major publisher of hobby magazines, newspapers, and price guides, as its president and/or chairman; coauthored at least three publications in the field of the study and collecting of coins; conducted a number of lectures on this subject around the country; received awards from national coin- and car-collecting organizations in recognition of his contributions to those fields; was the founder of a car show and swap meet; and had his large collection of cars featured in a film by an organization dedicated to automotive history. The Board found that this evidence established that the petitioner was publicly connected with the fields of coin collecting, car collecting, and publishing activities relating thereto, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by those who have an interest in such fields. Id. at 1910. Thus, as to the goods and services related to those fields, the Board granted the petition to cancel because the mark identified a particular living individual and there was no written consent to register. Id. at 1914. However, the petition to cancel the registration for "entertainment services in the nature of competitions and awards in the field of cutlery," was dismissed because petitioner had not demonstrated that he was publicly connected with the field of cutlery, or that he is so well known by the general public that a connection between petitioner and the mark would be presumed with respect to these services. Id. at 1910, 1911-12, 1914.
If no one with the name of the person identified in the mark is actually connected with the applicant or with the business in which the mark is used, and no person with the name in the mark is generally known such that a connection would be assumed, the mark generally would not be deemed to identify a particular person under §2(c), and consent would not be required. See In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1428 (TTAB 2014) (holding no consent required because applicant's FRANKNDODD mark would be understood by the relevant consuming public as referencing and commenting on the Dodd-Frank Act, rather than as specifically identifying Congressman Barney Frank and Senator Chris Dodd); Martin, 206 USPQ at 933 (holding that §2(c) did not prohibit registration of NEIL MARTIN for men’s shirts, where the individual, 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); Brand v. Fairchester Packing Co., 84 USPQ 97 (Comm’r Pats. 1950) (affirming dismissal of a petition to cancel the registration of the mark ARNOLD BRAND for use with fresh tomatoes because nothing in the record indicated that the mark identified the petitioner, Arnold Brand, an attorney specializing in patent and trademark matters, with the tomato business, or that use of the mark would lead the public to make such a connection).
To support a refusal under §2(c) as to a particular class in an application, it is not necessary to demonstrate that the individual is publicly connected with all the goods or services listed in the class. It is enough to show that the individual is publicly connected with at least some of the goods or services in the class. See Krause, 76 USPQ2d at 1911.
1206.03 When Inquiry is Required
Generally, if a mark comprises a name, portrait, or signature that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact identify a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name or likeness must be submitted. If there is sufficient evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry.
Full Name. If a mark contains a full name, consisting of a first name/initial(s) and a surname, the examining attorney must issue an inquiry as to whether the mark comprises the name of a living individual, unless it is clear from the record that the name is not that of a living individual. It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making the inquiry. If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.
Example: The mark is STEVEN JONES (or S. JONES), the application is silent as to whether the name identifies a living individual, and there is no evidence that the individual is generally known or publicly connected with the business in which the mark is used. The examining attorney must inquire whether the name is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name must be submitted.
Portrait or Likeness. Generally, if the mark comprises a portrait or likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must issue an inquiry as to whether the mark comprises the likeness of living individual, unless it is clear from the record that the likeness is not that of a living individual. It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making the inquiry. If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.
Fictitious Character. The examining attorney should not make an inquiry if it is clear from the record, or from the examining attorney’s research, that the matter identifies a fictitious character. For example, no inquiry is necessary as to whether "Alfred E. Neuman" or "Betty Crocker" is the name of a particular living individual because they are names of well-known fictitious characters. Likewise, no inquiry is necessary as to a design that is obviously that of a cartoon character.
First Name, Pseudonym, Stage Name, Surname, Nickname, or Title. If the mark comprises a first name, pseudonym, stage name, nickname, surname, or title (e.g., "Mrs. Johnson," "The Amazing Jeffrey," or "Aunt Sally"), the examining attorney must determine whether there is evidence that the name identifies an individual who is generally known or is publicly connected with the business in which the mark is used and, as a result, the relevant public would perceive the name as identifying a particular living individual. See TMEP §1206.02 regarding the meaning of "publicly connected."
Whether the relevant public would perceive a first name, pseudonym, stage name, surname, nickname, or title as identifying a particular individual usually depends on whether the particular individual has achieved some public recognition under that name, either generally or in connection with the relevant industry, business entity, goods, or services (e.g., as the inventor of the goods or services, the public face of the company, or a notable user of the products). See In re Sauer, 27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under §2(c) in the absence of consent to register, because BO is the nickname of a well-known athlete and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196 (PTO 1954) (holding registration of REED REEL OVEN barred by §2(c) in the absence of written consent to register from the designer and builder of the ovens, Paul N. Reed).
Typically, in the absence of fame or public recognition, first names, pseudonyms, stage names, surnames, nicknames, and titles are not necessarily associated with a particular individual. Thus, when the name in a mark is a first name, pseudonym, stage name, surname, nickname, or title, an inquiry is usually unnecessary unless the available information indicates that the relevant public will recognize or perceive the name as identifying a particular individual. See Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) .
Example: The mark is DOCTOR JONES, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name identifies an individual who is generally known or publicly connected with the business in which the mark is used, the examining attorney should not issue an inquiry or §2(c) refusal.
Example: The mark is JOE for cookies, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name identifies an individual who is generally known or publicly connected with the business in which the mark is used, the examining attorney should not issue an inquiry or §2(c) refusal.
Example: The mark is LYNCH’S LIGHTING for lamps, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name identifies an individual who is generally known or publicly connected with the business in which the mark is used, the examining attorney should not issue an inquiry or §2(c) refusal.
Because there must be some indication that the relevant public would actually perceive the name as identifying a particular individual, the mere fact that the name is the first name, pseudonym, stage name, surname, nickname, or title of a living individual associated with the applicant (e.g., an employee, founder, or corporate officer) usually would not, by itself, necessitate an inquiry regarding the name.
Example: The mark is DAVE’S AUTO SHOP and the application is silent as to whether the name identifies a living individual. A review of the applicant’s website indicates the owner of the shop is Dave Smith. In the absence of evidence that the relevant public recognizes DAVE as identifying Dave Smith, either generally (such as recognition as a former professional athlete or television personality) or with respect to the specific services (such as through numerous references in trade publications or social media postings), the examining attorney need not inquire whether the name DAVE is that of a particular living individual.
Famous Deceased Person or Historical Character. When it appears that the mark comprises the name or likeness of a famous deceased person or historical character, the examining attorney must obtain confirmation from the applicant that the person is in fact deceased, and require that the applicant submit a statement that the name or likeness shown in the mark does not identify a living individual. It is not necessary to print the statement. If the mark comprises a name that is distinctive and well known (e.g., Leonardo da Vinci), the examining attorney may consult with his or her manager regarding foregoing the inquiry. If there is evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry. See TMEP §§1206 and 1206.04(a) regarding marks that consist of or comprise a name, portrait, or signature of a deceased U.S. president with a living widow.
Statement of Record in Prior Registration. If the applicant claims ownership of 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 prior registration includes a statement that the name, portrait, or signature is not that of a living individual, the examining attorney may enter the same statement in the record, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation. See TMEP §§813.01(b) and 1206.05.
1206.04 Consent of Individual or President’s Widow
1206.04(a) Consent Statement Must Be Written Consent to Registration
Must Be Personally Signed. 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. 15 U.S.C. §1052(c). The consent must be a written consent to the registration of the identifying matter as a mark, and, in the case of a living individual, must be personally signed by the individual whose name, signature, or likeness appears in the mark. Where the name, signature, or likeness is that of a deceased president, the consent should be signed by the president’s surviving spouse.
Consent to Use is Not Consent to Registration. Consent to use of a mark does not constitute consent to register. See Krause v. Krause Pub'ns, Inc., 76 USPQ2d 1904, 1913 (TTAB 2005) ; Reed v. Bakers Eng'g & Equip. Co., 100 USPQ 196, 199 (PTO 1954) ; Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30, 31 (Comm’r Pats. 1937) ("Permission to use one’s name and portrait in connection with a specified item of merchandise falls far short of consent to register one’s name and portrait as a trade mark for such merchandise generally.") Consent to register a mark that makes no reference to consent to use is acceptable; the USPTO has no authority to regulate use of a mark.
Minors. If the record indicates that the person whose name or likeness appears in the mark is a minor, the question of who should sign the consent depends on state law. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, then the minor may sign the consent. Otherwise, the consent should be signed by a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. If the record indicates that person whose name or likeness appears in the mark is a minor, the examining attorney must inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled. If the minor cannot enter into binding legal obligations, the examining attorney must require consent by the parent or guardian. See TMEP §803.01 regarding the filing of an application in the name of a minor.
1206.04(b) Consent May Be Presumed From Signature of Application
When a particular individual identified in a mark is also the person who signed the application, his or her consent to registration will be presumed. Alford Mfg. Co. v. Alfred Elecs., 137 USPQ 250, 250 (TTAB 1963) ("The written consent to the registration of the mark ‘ALFORD’ by Andrew Alford, the individual, is manifested by the fact that said person executed the application . . . .") , aff’d, 333 F.2d 912, 142 USPQ 168 (C.C.P.A. 1964); Ex parte Dallioux, 83 USPQ 262, 263 (Comm’r Pats. 1949) ("By signing the application, the applicant here obviously consents. . . ."). Consent may be presumed whenever the person identified has signed the application, even if the applicant is not an individual.
Name of Signatory. Consent to register is presumed if the application is personally signed by the individual whose name appears in the mark, e.g., if the mark is JOHN SMITH and the application is personally signed by John Smith. The examining attorney should not make an inquiry or require a written consent. The examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§813.01(a) and (c). The consent statement must be printed even if the name that appears in the mark is that of the applicant.
Names Must Match. Consent may be presumed only where the name in the mark matches the name of the signatory. If the names do not match, the examining attorney must issue an inquiry. For example, if the name in the mark is J.C. Jones, and the application is signed by John Jones, the examining attorney must inquire whether J.C. Jones is John Jones. If applicant states that J.C. Jones is John Jones, consent is presumed. The statement that J.C. Jones is John Jones may be entered by examiner’s amendment, if appropriate. In such cases, the examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§813.01(a) and (c).
Likeness of Signatory. Consent may also be presumed when the mark comprises the portrait or likeness of the person who personally signs the application. When the mark comprises a portrait, or a likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must make an inquiry, unless the record indicates that the likeness is that of the person who signed the application. If the applicant responds by stating that the likeness is that of the person who signed the application, consent is presumed. No written consent is required, but the examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§ 813.01(a) and (c).
Application Must be Personally Signed. Consent may be presumed only where the individual whose name or likeness appears in the mark personally signs the application. If the application is signed by an authorized signatory, consent to register the name or likeness must be obtained from the individual. This is true even where the name or likeness that appears in the mark is that of the individual applicant.
Section 66(a) Applications. In a §66(a) application, the signed verification is part of the international registration on file at the IB and is not included with the request for extension of protection sent to the USPTO. 37 C.F.R. §2.33(e); TMEP §1904.01(c). The examining attorney is thus unable to determine who signed the verified statement. Therefore, the examining attorney must require a written consent to register, even where the name that appears in the mark is that of the applicant. If the verified statement in support of the request for extension of protection to the United States was personally signed by the individual whose name or likeness appears in the mark, the applicant may satisfy the requirement for a written consent to registration by submitting a copy of the verified statement that is on file with the IB.
1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant
An applicant does not have to submit a new consent 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 and/or services, or such goods and/or services as would encompass those in the subsequent application. See In re McKee Baking Co., 218 USPQ 287, 288 (TTAB 1983) . In this situation, the applicant only has to: (1) claim ownership of that existing registration; and (2) advise the examining attorney that the consent is of record therein. If the applicant provides the information that the consent is of record in the claimed registration by telephone or email, the examining attorney must enter an appropriate Note to the File in the record. The examining attorney must ensure that the consent statement is entered into the Trademark database. See TMEP §§813.01(a) and (c).
If an applicant has submitted a consent to register in an application that has not matured to registration, a new consent is not required for pertinent companion applications, but the applicant must submit a copy of the consent for each pending application. See In re McKee Baking Co., 218 USPQ at 288; 37 C.F.R. §2.193(g).
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.
1206.04(d) Implicit Consent
Consent may sometimes be inferred from the actions of the individual. In re D.B. Kaplan Delicatessen, 225 USPQ 342, 344 (TTAB 1985) (finding consent to the use and registration of the mark D. B. KAPLAN’S DELICATESSEN implicit in the terms of a "buy-out" agreement that relinquished all property rights in the name and forbade its use by the named party in any subsequent business) . However, the mere incorporation of a business or consent to the business’s use of the mark does not constitute implied consent to the registration of the mark. Krause v. Krause Publ'ns, Inc., 76 USPQ2d 1904, 1912 (TTAB 2005) (finding cancellation petitioner did not give implied consent to register when he incorporated a business utilizing his name, sold his stock in the business, and pledged the business's assets, including trademarks, to finance expansion and acquisitions, where there was no evidence that the individual expressly stated that the mark was the property of the corporation or agreed to refrain from use of the name in any subsequent business); In re New John Nissen Mannequins, 227 USPQ 569 (TTAB 1985) (finding consent to register JOHN NISSEN MANNEQUINS not implied from appearance of the name "John Nissen" in a deed of incorporation of applicant’s predecessor under the name "John Nissen Mannequins," nor from existence of foreign registrations for trademarks incorporating the name).
1206.05 Names and Likenesses That Do Not Identify a Particular Living Individual
If it appears that a name, portrait, or signature in a mark may identify a particular living individual but, in fact, the applicant devised the matter as fanciful, or believes it to be fanciful, the applicant may be required to submit a statement to that effect. See TMEP §1206.03 for information as to when an examining attorney should inquire as to whether a name or likeness is that of an 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; however, this information will not be printed in the Official Gazette or on the registration certificate.
No statement should be printed 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 printed. See TMEP §813.01(b).
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 applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation.