ON THE MARK Trademark News and Views

Oct 17, 2013

HEADLINE: Fight Over Obamacare extends to TM Office?

What’s The News?

  • The press, public, and even the President, have embraced “Obamacare” as shorthand for “The Affordable Care Act”
  • In recent months, half-a-dozen or so trademark applications featuring “Obamacare” have been filed in the U.S. Patent and Trademark Office

What’s The Law?

  • The Lanham Act (the federal trademark statute) prohibits registration of any trademark that consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.  15 U.S.C.§ 2(c)
    • Section 2(c) prohibits not only registration of full names but also surnames, shortened names, and nicknames, so long as the name does in fact identify a particular living individual.
    • Bar extends only to names of  celebrities and individuals  recognized in a particular field
    • Two part test:
      • the person’s name must be so well known that the public would reasonably assume the connection, or
      • the person’s name must be publicly connected with the business in which the mark is being used.
      • Examples:  Registration of  OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS and BARACK’S JOCKS DRESS TO THE LEFT blocked under Section 2(c).  No need to show connection between famous person and goods or services

What’s At Stake?

  • The ability to secure Federal trademark registration for “Obamacare” marks.
  • Section 2(c) does not prohibit use of marks incorporating the name of a living individuals
    • Individuals seeking to block use of their names as part of a trademark may sue
  • Section 43(a) of the Lanham Act prohibits “false designations of origin”
  • But, plaintiff must show likelihood of confusion, mistake, or deception
  • Right of publicity laws, both state and common law, also provide remedies for unauthorized use of a person’s name or likeness
  • Fame is not required

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