Precedential Decision Under Section 2(c) of the Lanham Act

A recent case from the Trademark Trial and Appeal Board (the “Board” or “TTAB”) focuses attention on part of the Lanham Act, which is not often the subject of many Board Decisions. Section 2(c) prohibits registration of a mark if it consists of or comprises a name, portrait, or signature identifying a particular living individual without written consent,  Lanham Act §2(c) , 15 U.S.C. §1052(c). The applicant filed an application to register the trademark MANIKCHAND for tobacco. The opposer, (a corporation formed under the law of India) cited Section 2(c) of the Lanham Act, stating MANIKCHAND is the personal name of the founder of the opposer, Rasiklal Manikchand Dhariwal, and there is no consent to use the name. See, M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd. and Global Technology & Trade Marks Limited, Opposition No. 91231033 (April 26, 2019) [precedential].

Opposer argues that consumers in the United States refer to Rasiklal Manikchand Dhariwal as the Manikchand Group. The opposer pleaded ownership of an application for MANIKCHAND GUTKA for chewing tobacco. Regarding standing for a 2(c) claim, this may be established by asserting facts that that show that opposer is a competitor of the applicant and has a right to use the subject name. Opposer testified that MANIKCHAND has been used in connection with tobacco products in the U.S, and that some U.S. vendors sell it under the mark RMD MANIKCHAND. The registrability of a mark is determined on the basis of facts that exist at the time the issue is under consideration (i.e. throughout the pendency of ex parte and inter party proceedings). In re Thunderbird Prods Corp., 406 F.2d 1389, 160 USPQ 730 (CCPA 1969).

The rationale behind 2(c) is that the law wants to extend protection to living individuals so they can commercially exploit their names, and this is why written consent is required. To sufficiently allege a 2(c) claim, a plaintiff must allege that the mark consists of the name, likeness, image or signature of a particular individual. In addition, a plaintiff must have pleaded that the individual is so well known that the public would reasonably assume a connection between the mark and the individual or that the individual is publicly connected with the business or the field for the goods and services, so that the connection would be assumed.

There are some similarities between a 2(c) claim and a 2(a) claim (false connection cases). To successfully have pleaded a 2(a) claim, a plaintiff must allege: (1) the defendant’s mark is the same or a close approximation of the name or identity of a person or institution; (2) defendant’s mark would be recognized by purchasers and point uniquely and unmistakably to the person or institution named; (3) that person or institution is not connected to the goods or services under the mark; and (4) such name or identity is of sufficient fame that when the defendant’s mark is used with the goods or services, a connection with the person or institution is presumed. One difference between a 2(a) claim and a 2(c) claim is that a 2(a) claim can be invoked by an entity, but 2(c) requires reference of a living individual. See Ross vs. Analytical Tech. Inc., 51 USPQ2d 1269 (TTAB 1999). See also our firm page entitled, Trademarks That Falsely Suggest A Connection With Other Persons, for more information on this topic.

Claims under 2(c) are applicable to full names, surnames, shortened names, nicknames etc. as long as the name identifies a particular living person. In the case at bar, MANIKCHAND is the opposer’s middle name, which means it is a shortened name, and would fall under § 2(c). At the time this opposition was filed, Mr. Dhariwal was alive; however he has since passed on. The Board held that since Mr. Dhariwal died while the opposition proceeding was underway, it terminated his right to oppose on this ground because now there is no particular living individual. Since this was the only pleaded claim, the opposition was dismissed. If you have questions concerning either a § 2(c) claim (consent to register case) or a § 2(a) claim (false connection case), please contact the firm for a courtesy consultation.