Understanding Consent in Trademark Applications: When, Why, and How

Trademark applications are essential for protecting the unique branding and identity of businesses and individuals. However, the process is not always straightforward, especially when it involves the use of a person’s name or likeness in the application. In such cases, obtaining consent in trademark applications from the individual identified in the application becomes crucial. Here I delve into the why, how and when of obtaining consent, relying on guidelines outlined in the Trademark Manual of Examining Procedure (“TMEP”) 813.01(a) and TMEP 1206.04(b).

When is Consent Required?

Consent is typically required in trademark applications when the name or likeness of an individual is used as part of the trademark. However, it’s essential to understand when and why consent is needed.

1. Use of a Person’s Name: Consent is typically required when a trademark application includes a person’s full name, first name, last name, or a recognizable variation thereof. This is especially true if the name is distinctive and not merely a common surname.
2. Use of a Person’s Likeness: In cases where the trademark includes a person’s likeness, such as their image, photograph, or other recognizable visual representation, consent is also necessary. This is to protect the individual’s right to control the commercial use of their image.
3. Public Figures and Celebrities: Consent may be required even for the use of the names or likenesses of public figures and celebrities, as they have a strong interest in controlling how their identity is associated with products or services.
4. Common Surnames: When a common surname is used as part of the trademark, consent may still be required in certain circumstances.
5. Deceased Person.  Usually, you don’t need to obtain consent to use a deceased person’s name or likeness.  That is not true for Presidents, however

Why is Consent Necessary?

Obtaining consent from individuals identified in a trademark application serves several important purposes:

1. Right to Privacy: Consent respects the individual’s right to privacy and control over how their name or likeness is used for commercial purposes. Without consent, their identity could be exploited in ways they do not approve of.
2. Avoiding Confusion: Consent helps avoid confusion in the marketplace. When a person’s name or likeness is used in a trademark, consumers might assume that the individual is endorsing or affiliated with the product or service. Consent clarifies the relationship, ensuring that consumers are not misled.
3. Respecting Trademark Law: Consent aligns with the principles of trademark law, which aim to protect both the rights of trademark owners and the public interest. By obtaining consent, trademark applicants demonstrate their commitment to adhering to these principles.
4. Preventing Legal Disputes: Obtaining consent can help prevent legal disputes and challenges to the trademark registration. It establishes a clear record between the individual and the trademark applicant, reducing the likelihood of litigation.

Guidelines for Consent

TMEP 813.01(a) provides guidance on when consent is required in trademark applications involving the names and likenesses of individuals. It highlights that consent should be obtained when:

1. Name is part of the mark: If a person’s name is part of the trademark, consent is required. This includes full names, first names, last names, or recognizable variations thereof.
2. Likeness is part of the mark: When the trademark includes the likeness of an individual, such as their photograph or image, consent is necessary to protect their rights.
3. Public figures and celebrities: Even in the case of public figures and celebrities, consent may be necessary to ensure that their name or likeness is not exploited without their permission.
4. Posthumous rights: In some cases, consent may be required even if the individual is deceased. Posthumous rights may exist, and consent should be obtained from the individual’s estate or heirs.
5. Procedural Guidelines for Consent

TMEP 1206.04 provides guidance on when and how to obtain consent:

1. Personal: A trademark can be registered only with the written consent of the living individual themself.
2. Written and signed: The consent must be a written consent to the registration of the mark and must be personally signed by the individual whose name, signature, or likeness appears in the mark.
3. Minors: If the person whose name or likeness appears in the mark is a minor, the question of who should sign the consent depends on state law. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, then the minor may sign the consent. Otherwise, the parent or legal guardian should sign on behalf of the minor.
4. Consent presumed: Consent may be presumed in some situations. Consent may be presumed whenever the person identified has signed the application, even if the applicant is not an individual.  Consent to register is presumed if the application is personally signed by the individual whose name appears in the mark.

The Consent Process

Often, consent is a minor matter, because the applicant is the person granting the consent or is a company owned by the person giving the consent.  However, in rarer cases, the trademark may use the name of someone not connected with the trademark application.  In those cases, obtaining consent from individuals identified in a trademark application involves several key steps:

1. Clear and Written Consent: Consent should be clear, unambiguous, and preferably in writing. A written agreement is not necessary but may be prudent in some cases.
2. Disclosure: The trademark applicant should fully disclose the intended use of the individual’s name or likeness in the trademark, including the nature of the products or services involved.
3. Consideration: In some cases, consideration may be exchanged for consent, such as financial compensation or other benefit to the individual.
4. Legal Review: It is a good idea to use a business or trademark attorney to ensure that the consent agreement is legally binding and comprehensive, addressing all relevant issues.

Summary

Consent plays a critical role in trademark applications when the names or likenesses of individuals are involved. It helps protect the rights and privacy of the individuals identified in the trademark while also ensuring transparency and clarity in the marketplace. By understanding when and why consent is needed, trademark applicants can navigate the application process effectively and avoid potential legal challenges. If you have any questions about filing a trademark application that incorporates someone’s name or likeness, please contact Phoenix trademark attorney Tom Galvani at 602-28-6481.