This week’s blog entry comes courtesy of a guy who was looking to make a little money off President Obama’s name but just couldn’t bring himself to admit it.
Before I get started, I think a little background on trademark law might be helpful to anyone reading this who isn’t a trademark geek. The federal Lanham Act prohibits the registration of a trademark that “consists of or comprises a name…identifying a particular living individual except by his written consent.” This statute has been interpreted quite broadly so as to include partial names, shortened names, nicknames, stage names, and pseudonyms so long as the proposed trademark identifies to the public a particular living individual. The question is whether the public would recognize and understand the mark as immediately identifying the person due to that person’s fame, celebrity, notoriety, or public reputation. If the applied-for trademark is deemed to identify a living individual, then the owner of the mark must obtain that individual’s written consent before the Trademark Office will allow the application to proceed through the registration process.
Keeping all that in mind, let’s jump back in time to about a month after Barack Obama was elected President of the United States. On December 12, 2008, Richard Hoefflin filed three separate trademark applications seeking to register the following marks:
OBAMA PAJAMA (Serial No. 77632400) for “pajamas”
OBAMA BAHAMA PAJAMAS (Serial No. 77632391) for “pajamas”
BARACK’S JOCKS DRESS TO THE LEFT (Serial No. 77632406) for “boxer briefs; briefs; pajama bottoms; pajamas; sleepwear”
Not surprisingly, the Trademark Examining Attorney refused registration of Hoefflin’s applications on the basis that the marks identify a living individual (Barack Obama) whose written consent was not made of record. In response, Hoefflin asserted that the name shown in his marks does not identify a particular living individual, but rather that OBAMA is a “very ancient Kenyan surname…found frequently among the Luo people” that “translates from Swahili to mean something similar to ‘to lean.'” Hoefflin further argued that BARACK is Hebrew for “blessed” and “has been a given name among Jews from Biblical times up to the present.” Wait, so Barack Obama is Jewish?? Mazel Tov!!
Anyway, after the Trademark Examining Attorney recovered from her fit of hysteria resulting from Hoefflin’s feeble arguments, she issued a final refusal and entered into the record evidence tending to show that OBAMA is a relatively rare surname and that BARACK is similar to other biblical names that happen to have meanings derived from ancient words. She also noted that it’s likely not a coincidence that Hoefflin’s applications were filed soon after the culmination of Barack Obama’s striking, historic, and well-publicized assent to the highest office in the nation. In response, Hoefflin filed a Request for Reconsideration with the Trademark Examining Attorney which included even more lame and far-fetched arguments. After the Trademark Examining Attorney denied the Request for Reconsideration, Hoefflin appealed the refusal to the Trademark Trial and Appeal Board.
On December 10, 2010, the Board issued its decision. To the astonishment of nobody, the Board affirmed the Trademark Examining Attorney’s refusal to register Hoefflin’s marks on the basis that they identify Barack Obama and that Obama’s written consent was not made of record. The Board found that President Obama is so well-known and famous that members of the public will reasonably assume that he is being identified by Hoefflin’s marks. So, all Hoefflin has to do now is call up his pal Barack and kindly ask him to provide written consent to the registration of his trademarks. Come on Barack, bail this guy out! We all know you’re good at giving bailouts!
Finally, although this isn’t really pertinent to anything discussed above, I think it’s kind of amusing that Richard Hoefflin is actually an attorney who was being represented in this matter by another attorney at his own firm. I guess you can afford to argue that the sky is green and that pigs fly when you’re probably not paying a dime to do it. But, for the rest of you who have to pay for legal representation, try to stay away from registering such well-known names as LADY GAGA (famous singer), TOM CRUISE (famous actor), and MORRIS TUREK (famous trademark attorney).