Trademarking of Sarah Palin, You Can Trademark Your Name

By Beth Hutchens
February 11, 2011

Sarah Palin

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.

The Author

Beth Hutchens

Beth Hutchens is a contributing author on IPWatchdog.com. Beth’s recurring, feature column typically focuses on Internet, trademark, copyright and/or privacy issues. She brings her unique perspective and witty writing style to subject matter that could otherwise be dry. Her insights, along with a “take no prisoners” attitude, work to provide a fun, entertaining and always informative column.

When not writing she is an attorney based in Seattle, Washington. can be reached at beth.hutchens@gmail.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments.

  1. Ron Q. Dry, Pseudonymous Docketing Guy February 11, 2011 4:27 pm

    Beth,
    Thanks for this – easily the most thorough, well-thought-out discussion of the issues surrounding these applications that I’ve seen so far. However, I still have a couple of questions…
    Looking at the Sarah Palin application, it states that the mark was first used in commerce at least as early as 1/1/1996, which wikipedia.org indicates is the year that she first ran for mayor of Wasilla. Assuming that’s the “use in commerce” referred to in the application, I have to say that I wouldn’t ordinarily consider running for political office to be a commercial activity – is there a legal definition of “commerce”, in a trademark law context, that disagrees w/ my understanding?
    Second, as proof of use for the class 35 goods, “Providing a website featuring information about political issues”, the application includes screenshots from Sarah Palin’s page on the Facebook website. Perhaps I’m being overly literal here, but to my way thinking, in this case, Facebook is providing the website, and Gov. Palin is using a service that’s provided by Facebook. To phrase it another way, in order to register a trademark for the service of “providing a website”, does one need to operate one’s own top-level domain, or is it sufficient to use a service like Facebook to provide one’s content?
    thanks again,
    Ron

  2. Yet Another Examiner February 11, 2011 10:40 pm

    ” 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…”

    Wah? I’m not well versed in trademark law, but that seems like more than a minor administrative issue.

  3. NikeTM February 12, 2011 4:55 pm

    Sorry, still have no idea what the purpose of the TM would be? you can’t stop people from saying your name….what are the potential benfits? could she stop people from selling say, palin for pres buttons?

  4. New Here February 12, 2011 8:58 pm

    Breaking that I promised myself I would only read. This is important enough.

    @Beth Hutchens

    Would you agree with, that names aren’t unique, because many people have the same name. With a TM of a name I would hope that it would be specific to the individual, the name being only an instance. My point is that once I came across an obituary in the local paper — it was me. If not for the photo, people that know me would have thought is was me for sure, because the name was on the money.

    I was very happy for that photo, that any mistake that it was me, didn’t make it to those that may have acted, that would have created problems for me I didn’t need — as funeral plans.
    So an instance of a name being specific to an individual, would in cases where the “name” is used, does no harm to those by the same name, by those that have mistaken the name for someone else with the TM.

    Thanks.

  5. Beth Hutchens February 13, 2011 12:31 pm

    @ Ron. Thanks for the compliment. I’m glad you enjoyed the article. To answer your questions:

    “Assuming that’s the “use in commerce” referred to in the application, I have to say that I wouldn’t ordinarily consider running for political office to be a commercial activity – is there a legal definition of “commerce”, in a trademark law context, that disagrees w/ my understanding?”

    It doesn’t appear to me that the standard for distinctiveness of a name is a function of how the name became distinctive so long as it is distinctive. Governor Palin became well known as an elected official, yes, but her current classification of goods is not “being a public servant”, as it were. “Use in commerce” just means that she is selling a good or service in the regular channels of interstate commerce, so you may be reading too much into the concept. Her service mark class of goods can be whatever she wants it to be.

    An easier example of this concept may be in the case of a professional athlete. Darrelle Revis of the New York Jets filed a trademark application for REVIS ISLAND to be used in connection with the sale of clothing. He is famous because he is a quite talented Cornerback for a well known football team. His application has been allowed so now all he has to do is show that he is selling clothing with the mark REVIS ISLAND on it. It’s the same concept with Governor Palin. The examiner did not appear to take issue with the distinctiveness of her name or how it became so, and we won’t either (for now).

    “Second, as proof of use for the class 35 goods, “Providing a website featuring information about political issues”, the application includes screenshots from Sarah Palin’s page on the Facebook website. Perhaps I’m being overly literal here, but to my way thinking, in this case, Facebook is providing the website, and Gov. Palin is using a service that’s provided by Facebook. To phrase it another way, in order to register a trademark for the service of “providing a website”, does one need to operate one’s own top-level domain, or is it sufficient to use a service like Facebook to provide one’s content?”

    As for the facebook specimen, I’m not sure. Social media is kind of a new thing, but if I can wax philosophical, the Examiner rejected it because it did not properly show the name in connection with the goods specified because:

    “The specimens submitted for the “Providing a website featuring information about political issues” are postings on Facebook®. The specimen does not show use of the mark as “providing a website featuring…”. Rather the proposed mark merely appears as a posting name.”

    I think the Examiner meant that the specimen did not properly function as a source indicator for her services because it was merely postings about her, not specifically her in connection with her services. The specimen must show her name AND her services, not just her name. This is kind of related to the issue of domains as trademarks, I guess, which I wrote about last week.

    @YAE- Not so much. The Examiner did not reject the applications on the merits (Likelihood of confusion, merely descriptive, etc.) so in order to address the office action, all Governor Palin needs to do is show an adequate use in the identified class. She either has this evidence or doesn’t and can submit it or not. Examiners reject specimens all the time, so when I say administerial, I mean all she needs to do is submit a proper specimen as opposed to respond with legal argument.

    @Nike- Neither do I, and I’m not going to conjecture. And I don’t know how aggressively she plans to police the mark if it issues- meaning I don’t know what she’s going to do with it or who she would give permission to use it. Theoretically, though, if the mark issues, she could certainly try to prevent someone from using SARAH PALIN in class 035, and maybe others. We’ll just have to wait and see on this one.

    @ New- Sure, that’s exactly why the requirement for distinctiveness for trademarking a personal name is so very high. We don’t want to prevent other business owners from using their own names. This is kind of a wacky subject, I know, and it can get pretty confusing when we start thinking about all that comes with trademarking an individual’s name. So we’re glad that the standard is so high for all the reasons you’re thinking of and lots more.

  6. Vicki Hopkins September 19, 2011 6:57 pm

    There seems to be some question about trademarking your name if you are an author. Is that possible? I don’t provide services – unless you consider writing a service — but I am an independent publisher and my name is on my goods, i.e. my books!

    I ask this frankly due to some harassment problems on Twitter with one individual using my full name and tweeting that I write crap. So fine, she thinks I write crap, but I have no recourse with Twitter. If I could prove she’s violating a trademark infringement by mentioning my name without my permission, I could get her account deleted at least.

    Any thoughts?

  7. Mark August 6, 2013 1:42 am

    I am interested in trademarking my name. I believe as of now, I am the ONLY Mark Hartfeld in the United States and possible the world. Don’t believe me, Google my name. Of course watch for spelling because there are many variations of my last name but none are correct to my last name; e.g. Hatfield, Hartsfeld, et . I would love to hear back from you on this matter. If I am the only Mark Hartfeld in the United States, and I am working towards my Ph. D. in Psychology, would that not give me a right to trademark my name? Just curious.

  8. Gina October 15, 2013 11:42 am

    Beth, thank you for your enlightening remarks. I’m a writer–am I allowed to write a biography of a person whose name is trademarked?

  9. Gina October 31, 2013 7:49 pm

    Gina again–let me clarify my question of October 15th . . .
    I’ve been writing a biography of someone, now deceased, whose name ( I now discover) has been trademarked. Her foundation has sent me a Cease and Desist letter, asking that I stop all work on the book, or get their permission to publish, which will mean sharing profits with them and giving them the copyright. Is it really possible that trademarking a name requires that a writer have the trademark owner’s permission before publishing an article or book? It FEELS like an infringement on First Amendment rights.
    Thanks!

  10. Brice January 27, 2014 8:16 pm

    Re: Sarah Palin
    First off, I have no legal experience so sorry in advance if my question seems ignorant.
    Is it possible that a company could make Ice Cream under the Sarah Palin name? For example, Sarah Palin Ice Cream Shop. They are clearly 2 different services and I would think they would be under a different class. Also, could an Ice Cream Company make a flavor of Ice Cream with the Sarah Palin name? For example, Ben and Jerry’s ice cream names a flavor “The Alaskan Palin”. It is implied but not directly called Sarah Palin’s Ice cream flavor?
    Thanks so much for any input.