New York Trademark Attorney Blog
Now that Melania Trump is to assume the role of First Lady of the United States on January 20, 2017, her trademark troubles may have just begun. Melania Trump has hired a law firm in Slovenia to stop the use of her name on numerous products without her consent. Similar to the laws of the United States, use of the name Melania Trump without Ms. Trump’s authorization for commercial purposes is a violation of the law in her native country. Since Donald Trump was elected President of the United States, various products in Slovenia have commenced use of Melania Trump’s name such as shoes, underwear, candy, cakes, etc. In Slovenia, not only did these products use Melania Trump’s name, some also placed her image on the packaging. I wouldn’t be surprised if the United States Patent & Trademark Office (“USPTO”) also starts to receive applications trying to take advantage of the recent fame of Melania Trump.
The soon to be First Lady, already owns several trademark registrations and one pending trademark application with the USPTO. There is a registration in the name MELANIA for watches and jewelry, a second registration for the mark MELANIA in international class 3 for various cosmetic products, and a third registration for MELANIA TRUMP for jewelry and cosmetic goods. The earliest filing date of the three applications was in 2009 and the latest trademark application was filed in August 2016.
As anticipated, there was also a trademark application filed for the mark MELANIA DIET, but not filed by Melania Trump. This application was filed on July 20, 2016 seeking to brand weight reduction services. On November 16, 2016 a refusal was issued by the USPTO. The refusal states that based on Trademark Act Section 2(c), 15 U.S.C. §1052(c) a name in a trademark would identify a living individual if the person bearing the name will be associated with the mark when used on the goods or services because the person is so well known that the purchasing public would reasonably assume a connection with the person and the goods or services. See our web page entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where we discuss similar cases involving the famous model Twiggy, Beyonce’s famous infant Blu Ivy Carter and numerous applications trying to incorporate President Obama’s name such as The Obama Collection, Bronx Obama, and The Obama Collection.
The refusal for MELANIA DIET further stated that Melania Trump is married to the famous American business man and President-elect Donald Trump. She will be assuming the role of First-Lady in January 2017. The media has recognized Melania Trump for her health and fitness and therefore, would associate her with the applied for mark MELANIA DIET. It was also noted that the trademark application for MELANIA DIET did not contain the written consent of Melania Trump. Section 2(c) of the Trademark Act, not only applies to the full name of an individual, but also a first name, surname, shortened name, stage name, or a nickname that would identify a particular living person. The Examining Attorney cited a similar case where the mark PRINCESS KATE was refused on similar grounds because the trademark pointed unmistakably to Kate Middleton. See our blog post entitled, TTAB Determines That Royal Kate Unmistakably Identifies Kate Middleton, where the Board uses a similar section of the Trademark Act, Section 2(a), to declare that the proposed mark PRINCESS KATE falsely suggested a connection with the famous British Royal Kate Middleton.
The fact that a trademark also contains another term or terms in addition to the name of a particular individual does not eliminate the requirement for written consent. For example, in this instance the addition of the term “diet” did not obviate the need for consent. A similar scenario involved a refusal by the USPTO to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY for fragrances and cosmetics. The Board concluded that the mark falsely suggested a connection with the deceased musician Benny Goodman. Before registering a mark that may identify a living individual or falsely suggest a connection with a person or institution consult with trademark counsel to determine if the trademark application will be met with a refusal or if there are any special requirements mandated under trademark laws. If you have any questions pertaining to this subject matter or to trademarks in general, please contact us for a courtesy consultation.