There was some buzz earlier this week about Governor Sarah Palin filing an application for a trademark for her own name. Her daughter, Bristol Palin, filed one for her name too. The issues for the trademark applications are identical, so I will mainly focus on the Sarah Palin trademark application and take this opportunity to leave Miss Bristol alone.
Anyway, there are a few groups of people who are apparently not pleased with this one bit and are calling both women all sorts of mean names. My first reaction was, “What’s the big deal? Why is everyone so hyper because of a little ol’ trademark application?” It then occurred to me that, as was the case for the sound trademark, people are all worked up over a misunderstanding of trademark law. Again.
Folks, the Trademark act of 1946 specifically allows a person to obtain a trademark in her name provided the proposed name mark meets certain criteria. And the Trademark Manual of Examining Procedure (“TMEP”) tells you what those criteria are. As shocking as it may sound, people trademark their names all the time. It’s pretty much standard operating procedure for celebrities and athletes. Granted, it is a bit uncommon for politicians, but it’s not unheard of. Besides, last time I checked, Sarah Palin is no longer serving in public office and is more of a public figure anyway, so what’s with the hullabaloo?
First, it’s important to note that in Palin’s case (and Miss Bristol’s as well) the proposed marks are technically service marks. A service mark, much like a trademark, is a word or symbol a person uses to describe her services, as opposed to goods. The two are nearly indistinguishable in terms of rights, but it’s important to make the distinction. Sarah Palin is not selling goods; she is selling a service (International class 035 and 041), but the analysis is the same.
The concept of trademarking your name is explained in chapter 1300 of the TMEP and it’s pretty straightforward. As always, in order for an application to turn into a trademark, the proposed mark (the name SARAH PALIN in this case) has to identify the services (or goods); distinguish them from others; and it has to be a source indicator. This means the name has to tell the consuming public who you are and what you sell all on its own. This is not as easy as it sounds.
A person’s name has to be so distinctive that the consuming public automatically thinks of a particular person when hearing that name, not just a person with that name. You show this by providing evidence of what is called “secondary meaning”. Secondary meaning means that even though the word is descriptive (like an adjective or a name), people don’t think of the adjective or name as a descriptor, they think of YOU. Don’t be fooled by the simple explanation; this is one tough cookie to prove up. Think how hard it is to show distinctiveness of a descriptive term like BLUE. With a personal name that difficulty is increased exponentially.
Remember how we don’t like to register descriptive marks because allowing them could prevent business owners from describing their goods or services? How crazy would it be if you couldn’t even use your own name on your store front? This is why there has to be some pretty strong public recognition before you’ll be able to pull off registering your name as a trademark thus precluding everyone else from using that name. So, long story short, trademarking a personal name is tough to do, but it’s not impossible.
The TMEP 1301.02(b) will help out if you want to try this. Personal names (actual names and nicknames) can function as marks only if they identify and distinguish the services and not just the person; you can’t just trademark your name by itself. Here’s a list of exemplary holdings I lifted shamelessly from the TMEP: In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Products, Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group).
But the name of a character or person is registrable as a service mark if you can show that it is used in a way that tells people what you do in addition to telling them who you are. Here’s some more neat-o cases I lifted from the TMEP: In re Florida Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Carson, 197 USPQ 554 (TTAB 1977) (individual’s name held to function as mark, where specimen showed use of the name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased); In re Ames, 160 USPQ 214 (TTAB 1968) (name of musical group functions as mark, where name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and telephone number of the group’s booking agent).
So you have to show what you’re doing when using your name to have it function as a trademark. And there has to be some really strong recognition in the consuming public. As I mentioned, this type of proof is pretty tough to get. Trademarking a name is commonplace for celebrities and athletes because the hard part is already done- people already know who you are and the recognition hurdle is sailed over with ease. All that’s left is to find a good or service and start engaging in interstate commerce. But if you’re name is Joe Smith from Smalltown, USA you have a bit of work ahead of you.
If you want to trademark JOE SMITH for your burger joint, you’re going to have to do some work to acquire that level of distinctiveness and provide evidence that the public recognizes you in connection with the stuff you’re associating your name with. This means recognition beyond your little town. Gaining this level of recognition can take forever and typically requires a rabidly aggressive marketing campaign. Ernesto and Julio Gallo just called. They said to say “Welcome to the party” and “good luck”. So the thing to remember about getting a trademark for your name is that it might not be a good first goal. Your first goal should be getting popular enough to where you could trademark your name if you wanted to. 15 years ago, Sarah Palin would have had a tough go of showing SARAH PALIN was distinctive. Today, it’s a definite possibility. Make sense?
One last thing. Registering a personal name mark requires the consent of the actual person, which kind of makes sense when you think about it. Some people are making an issue out of the fact that both Sarah Palin applications were rejected because they weren’t signed by the actual person the name belongs to (this is one of the few cases where the representative can’t sign on behalf of the applicant.) But this is not that big of a deal. The Palins will just need to provide the required consent form within the next 6 months. And neither application included an acceptable specimen showing the use in commerce, so they’ll both have to provide that, too. Other than these administrative issues, there’s nothing leading me to believe both trademarks wont issue in due course.
I have no idea what Sarah Palin or Bristol Palin plan on doing with the marks. But if I had to guess, I’d be willing to be that the applications were filed to, oh, I don’t know, protect a viable service mark? Prevent unauthorized (and inappropriate) uses of the name? Create brand recognition for the service? These are all things the responsible trademark owner should do. Besides, given the vitriol the media slings at both Sarah Palin and Miss Bristol with can you really blame either of them? At the end of the day, don’t be hung up on the fact that a person’s name is the proposed mark. It can still be a distinctive source indicator and thus deserves protection. Sarah Palin was perfectly within her rights to file her trademark application and so was Miss Bristol. Just ask Lebron James, Arnold Schwarzenegger, Rush Limbaugh, and Elvis.