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).