Greta Thunberg Does Not Need a Trademark Registration

By Thomas Williams
February 10, 2020

“Given her recent renown, if not fame, in connection with climate activism, Thunberg has likely already established protectable rights under the unfair competition provisions of the federal Lanham Act.”

https://depositphotos.com/284344042/stock-photo-swedish-environmental-activist-greta-thunberg.htmlClimate activist Greta Thunberg is reportedly planning to register her name as a trademark based on her fears that third parties will exploit her identity for commercial gain. While registering a trademark has many advantages under U.S. law, she can likely accomplish her goal of protecting her name without the cost, delay, and uncertainty associated with the trademark registration process.

As an initial matter, a trademark does not exist in the abstract. It is only protectable in connection with particular identified goods and services. Consequently, her trademark (or service mark) application would need to identify the goods or services she offers or intends to offer under the mark. To obtain registration, she would ultimately need to provide specimens showing technical trademark (or service mark) use. 15 U.S.C. § 1051.

A Better Option

However, given her recent renown, if not fame, in connection with climate activism, she has likely already established protectable rights under the unfair competition provisions of the federal Lanham Act, 15 U.S.C. § 1125(a)(1)(A) (“Section 43(a)”). After being named Time Magazine’s 2019 “Person of the Year,” and enduring public scorn via President Trump’s social media account, “Greta Thunberg” should easily meet the threshold for protection. As a result, Thunberg could bring a false endorsement claim under Section 43(a) against commercial uses of her name that falsely suggest that she has endorsed, sponsored, or approved a third party’s goods or services. Potential remedies include injunctive relief (15 U.S.C. § 1116) and, if she can establish actual injury, damages (15 U.S.C. § 1117). She would not be the first celebrity to do so.

Celebrity Precedent

The seminal case on false association claims is Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), where singer Tom Waits sued Frito-Lay for using a sound-alike singer in an ad for SalsaRio Doritos snack chips. The court had little difficultly in determining that Waits’ distinctive voice – described as “raspy, gravelly” and “how you’d sound if you drank a quart of bourbon, smoked a pack of cigarettes and swallowed a pack of razor blades … late at night” – was worthy of protection under federal law. More recent claims include Michael Jordan’s successful lawsuit against grocery chain Jewel for using his name and likeness in connection with an advertising campaign. Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014). Kareem Abdul-Jabbar also successfully challenged General Motors for using his given name, Lew Alcindor, in connection with an ad premiering during the 1993 NCAA basketball tournament. Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996). In 2019, entertainer Ariana Grande filed suit against clothier Forever 21 for using a look-alike model to promote its wares on social media. Ariana Grande-Butera v. Forever 21, Inc., Case No. 2:19-CV-07600 (C.D. Cal.). According to the complaint, Forever 21 used approximately 30 photos and videos of the look-alike as part of its campaign. The case is administratively stayed in light of Forever 21’s pending bankruptcy proceeding.

Celebrities may also avail themselves of right-of-publicity claims under state law. Those claims vary by state, but the estates of Elvis Presley, Marilyn Monroe, and others, have successfully sued on these grounds. Thunberg, however, may be unable to avail herself of right-of-publicity protections under U.S. state law because she is a citizen of Sweden with no apparent residency in the United States.

Registration Not Required

A U.S. trademark registration would provide Thunberg with presumptions of validity, ownership, and certain exclusive rights under federal law. 15 U.S.C. § 1057(b). However, given her recent status as an internationally-known climate activist, she would have a strong case for protecting her name and likeness under the false endorsement provisions of Section 43(a). While federal law permits nominative and non-commercial fair uses of her name, she could challenge any commercial uses that suggest she has endorsed, sponsored, or approved a third party’s goods or services.

 

The Author

Thomas Williams

Thomas Williams is a partner in Ulmer & Berne’s Chicago office, where he litigates trademark and false advertising disputes on behalf of a number of the world’s largest and most sophisticated brands. He also manages prosecution and maintenance of trademark portfolios. He is a member of the International Trademark Association (INTA), where he serves on the Trademark Enforcement Committee.

For more information or to contact Tom, please visit his Firm Profile Page.

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 5 Comments comments. Join the discussion.

  1. Guillermo F. Perez-Argüello February 10, 2020 1:05 pm

    Maybe she can move to the US, request resident status, then citizenship, then attract 650,000 people to her home, pending its being listed in the National Register of Historic Places and thyen swiftly declared a National Historic Landmark. Finally let us dream her US home may replace Graceland as the second most visited home after the White House. It’s not just a matter of virtuosity, her being TIME Person of the Year, Noble Prize laureate or even nominated notwithstanding.

  2. Anon February 10, 2020 4:39 pm

    Guillermo,

    Did you have a legal point to make?

  3. Mia February 11, 2020 10:10 am

    Why not register anyway? It would give her additional rights and serve to discourage 3rd party use of her name to some degree. The legal actions she might avoid as a result would likely be more costly and time consuming than getting a registration.

  4. Anon February 11, 2020 11:21 am

    Mia,

    The “why not” directly has to do with the heart of the article here.

    Is any such registration a legitimate use of the Trademark system? If not, then THAT is why not.

  5. MaxDrei February 12, 2020 4:11 am

    Interesting. Good that US law provides protective rights other than RTM against those who damage Thunberg by their misappropriation of her name. It seems though that in other countries registering her name as a trademark is needed because, absent that particular “Keep off the Grass” notice, she otherwise has no remedies. Reuters reports her as saying that, sadly, it’s “necessary” to register. If you don’t put out “Keep Off the Grass” Notices you are not in a very good position to complain when people fail to keep off your grass.

    A bit like when Chinese products inspired by your innovation flood the market. If you haven’t taken the step of patenting your innovative product in the PRC, you can hardly complain to the authorities in the People’s Republic about such manufacture there.

    One hopes that the law is set up to help those who help themselves, whether or not it helps those who shout loudly how “unfair” everything is, these days.

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