The issue of celebrities being able to enforce their rights to their names, when the names are copied in a squatted domain, comes up fairly frequently in my work. However, in order to reclaim a squatted domain, through legal channels it’s critical that a celebrity be able to show that their name has trademark rights. Recent attempts to register former Alaska governor Sarah Palin’s name as a trademark serves as a great case study on the requirements that must be met before a famous individual can officially trademark his or her name.
On November 29, 2010, the U.S. Patent and Trademark Office (USPTO) issued an office action rejecting a trademark application for the phrase SARAH PALIN in relation to public speaking services and providing a website featuring information about political issues (Ser. No. 85170226). The USPTO Examiner stated that the specimens submitted along with the application did not show that the mark had been used in connection with the services listed. Specimens included screenshots of Palin’s Facebook page, a Fox News story announcing her joining the network as a contributor, and a copy of Ms. Palin’s book “Sarah Palin: America by Heart.” The office action also notes that Ms. Palin did not, herself, sign the trademark application nor a consent to the filing of the application.
Similarly, an application for the name BRISTOL PALIN claiming motivational speaking services (Ser. No. 85130638) was initially rejected because Bristol Palin’s consent was not on file and the submitted specimen was just a page with the mark typed on it. Both applications were filed by Thomas Van Flein of the Clapp Peterson Van Flein Tiemessen & Tho firm in Anchorage, Alaska.
It is a well-settled principle of trademark law that a name must be used in connection with the public offering or sale of some kind of product or service in interstate commerce in order to meet the requirements for trademark registration. Simply being famous is not enough to merit a trademark of one’s name. This is one big reason that well-known political or business figures have had difficulties in registering their names as trademarks – they have not actually sold anything to the public under their own names.
Here, if former Alaska Governor Palin and her daughter can submit proof that they use their names, not merely as public figures, but as true brands in commerce, they should be able to get their trademarks registered just as so many other famous speakers, authors and performers have done before them. It will be interesting to follow these applications to see what sort of additional specimens are filed and whether the USPTO eventually deems them worthy of being registered as trademarks.
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