Section 2(c) Refusal: When Consent Is Required to Trademark the Name of a Living Individual

A Section 2(c) refusal is one of the most important trademark issues businesses and individuals may encounter when seeking to register a brand name that identifies a living person. In the intricate world of trademark law, the journey from a compelling brand name to a federally registered trademark is often fraught with legal nuances. One such critical consideration, frequently encountered by businesses and individuals alike, revolves around the use of personal names. Specifically, Section 2(c) of the Lanham Act (15 U.S.C. §1052(c)) stipulates that the United States Patent and Trademark Office (USPTO) may refuse registration of a mark that identifies a particular living individual unless the written consent of that individual is provided. This provision serves as a vital safeguard, protecting an individual’s right to control the commercial use of their identity. This comprehensive guide delves into the complexities of Section 2(c), exploring its scope, the types of names it covers, landmark legal interpretations, and practical strategies for navigating this essential aspect of trademark registration. For expert guidance on securing your brand, explore our trademark services. 

Understanding the Core of Section 2(c)

At its heart, Section 2(c) is designed to prevent the unauthorized commercial exploitation of a living person’s identity. It recognizes that an individual’s name, likeness, or persona holds inherent value and that using it in connection with goods or services without permission can be misleading or damaging. The USPTO’s examination process for Section 2(c) refusals focuses on whether the mark, as used on or in connection with the applicant’s goods or services, would be recognized by the public as identifying a specific living individual. This is crucial for brand protection and avoiding legal disputes. 

The Legal Basis: 15 U.S.C. §1052(c)

The statute states: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it… (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent or the name, signature, or portrait of a deceased president of the United States during the life of his widow, if any, except by the written consent of the widow.” 

This provision underscores a fundamental principle: while individuals are free to use their own names in commerce, they cannot, without consent, appropriate the identity of another living person for commercial purposes in a way that suggests endorsement, sponsorship, or connection. Understanding this legal framework is vital for any business considering trademark filing. For more details on comprehensive trademark services, visit our trademark services page.

What Constitutes an “Identifying” Name?

The USPTO’s Trademark Manual of Examining Procedure (TMEP) Section 813 provides crucial guidance on what constitutes an “identifying” name under Section 2(c). It clarifies that the rule extends beyond just legal names to include nicknames, pseudonyms, or stage names, provided there is evidence that the name identifies a specific living individual who is publicly connected with the goods or services, is generally known, or is well known in the field relating to the relevant goods or services. 

This broad interpretation ensures that the protection is not easily circumvented by simply using a non-legal but publicly recognized identifier. The key is the public’s perception: would a significant portion of the relevant public recognize the name as referring to a specific living person? This is a critical aspect of trademark basics. Our FAQ page addresses common questions about trademarking names and the application process.

Beyond Legal Names: Stage Names, Nicknames, and Pseudonyms

The TMEP’s guidance highlights that the scope of Section 2(c) is not limited to an individual’s birth name. Public recognition is the paramount factor. This is particularly relevant in industries where individuals often adopt professional monikers that become synonymous with their public identity. This also ties into what makes a strong trademark.

Case Study: Lady Gaga (Stefani Germanotta)

Consider the stage name LADY GAGA. While her legal name is Stefani Germanotta, her stage name is undeniably her primary public identifier. If an applicant sought to register LADY GAGA for goods or services, the USPTO would require the written consent of Stefani Germanotta. The name LADY GAGA, despite not being her birth name, unequivocally identifies a particular living individual who is globally recognized and connected with entertainment services. Without her consent, such a trademark application would face a Section 2(c) refusal. This demonstrates the breadth of the rule in protecting public figures’ commercial identities. This is a vital lesson for entrepreneurs in creative industries. 

Case Study: Martha Stewart

Conversely, Martha Stewart exemplifies the power of an individual’s actual name becoming a global brand. Her legal name, MARTHA STEWART, is the cornerstone of a vast empire encompassing media, home goods, and lifestyle products. Her company owns hundreds of trademark registrations for MARTHA STEWART and variations thereof. For each of these registrations, Martha Stewart herself had to provide her personal, written consent to the USPTO. This illustrates how individuals can leverage their own names to build powerful brands, provided they adhere to the consent requirements for registration. This highlights the importance of registered trademarks for brand protection. 

These examples underscore that whether it’s a stage name or a legal name, if the public identifies it with a specific living person, that person’s consent is a prerequisite for trademark registration by another party. You can learn more about building a strong brand identity and avoiding trademark filing mistakes on our about page.

The “Trump Too Small” Case: A Landmark Supreme Court Decision

One of the most significant recent developments concerning Section 2(c) came with the U.S. Supreme Court’s decision in Vidal v. Elster, 144 S.Ct 1507 (2024). This case provided crucial clarity on the constitutionality of Section 2(c) and its interplay with First Amendment free speech rights. This ruling is essential for understanding trademark law in the modern era. 

Background of the Case

A California attorney filed a trademark application for TRUMP TOO SMALL for t-shirts and other clothing. The USPTO refused registration under Section 2(c) because the mark included the name of a living individual (Donald Trump) without his consent. This highlights a common USPTO office action refusal when a name is involved.

The applicant challenged this refusal, arguing that the restriction on registering a name was a violation of his First Amendment right to freedom of speech. The case made its way through the appellate courts and ultimately to the Supreme Court. 

The Supreme Court’s Ruling

The Supreme Court affirmed the USPTO’s rule, holding that Section 2(c) does not violate the First Amendment. The Court’s reasoning was multifaceted:

• Viewpoint Neutrality: The court found that the rule requiring consent is viewpoint neutral. It applies to any living individual’s name, regardless of the message or viewpoint being expressed. It does not favor or disfavor any particular political or social message. This neutrality was a key factor in upholding the requirement that consent is constitutional under the First Amendment. This decision reinforces the principles of trademark protection. 
• Historical Context of Trademark Law: The Supreme Court reviewed the long history of trademark law, noting that the protection of individual names has been a feature of trademark law since the 1700s. Early English law, for instance, allowed weavers to incorporate their names into linen cloth and held individuals liable for fraud if they used another person’s name in their product. This centuries-old tradition formed the basis for the current USPTO rule. An early U.S. trademark case, Thomson v. Winchester, 36 Mass. 214, 216 (1837), also involved a dispute over a person’s name used in commerce, further illustrating the historical precedent.
• Protection of Reputation: The Court emphasized that a primary reason for prohibiting third parties from obtaining a trademark registration of another person’s name is to protect that individual’s reputation. A person’s name is inextricably linked to their identity. Allowing a third party to provide goods or services using that name could damage the individual’s reputation if the goods or services were substandard or if the individual did not wish to be associated with them. This is a core aspect of brand protection. 

Based on this historical context, the viewpoint-neutral nature of the rule, and its purpose in protecting personal reputation, the Supreme Court concluded that Section 2(c) was not an unconstitutional restriction on free speech. The USPTO’s initial decision to refuse registration of TRUMP TOO SMALL was upheld. This case provides valuable lessons from high-profile USPTO refusals.

Implications for Future Applications

Interestingly, the same attorney involved in Vidal v. Elster later filed another trademark application for TRUMPTOOSMALL.COM. This application also received a Section 2(c) refusal, among other issues, reinforcing the USPTO’s consistent application of the rule. This application is currently abandoned, and it appears Mr. Elster will not be pursuing this application further. This case firmly establishes the legal precedent that consent is indeed required for trademarking the name of a living individual, even when the use is intended for expressive or critical purposes. This underscores the importance of proper trademark application procedures.

Navigating Section 2(c) Refusals: Practical Strategies

For businesses and individuals seeking to register a trademark that might fall under Section 2(c), understanding how to navigate potential refusals is crucial. Proactive measures and a clear understanding of the USPTO’s requirements can save significant time and resources. This is where professional trademark legal advice becomes invaluable.

1. Consent is Required If Applicant Is Associated with the Name 

Consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services or (2) the individual is publicly connected with the business in which the mark is used. TMEP Section 1206.02.

Thus, use of a name may be allowed if the name is not associated with the applicant or the name does not identify a president or other famous person. For example, the USPTO allowed registration of THE ETHEL CIRCLE for an online community for women over 60. The applicant, the AARP, had no association with the name “Ethel.” Therefore, the USPTO did not require the consent of any living individual. 

2. Obtain Written Consent

If your proposed mark clearly identifies a living individual associated with the mark, the most straightforward path to registration is to obtain their written consent. This consent should be:

• Clear and Unambiguous: Explicitly state that the individual consents to the use and registration of their name (or likeness/signature) as a trademark for the specified goods and services.
• Signed by the Individual: The consent must come directly from the living individual, not from an agent or representative unless specifically authorized.
• Submitted to the USPTO: The written consent must be submitted as part of your trademark application or in response to a Section 2(c) refusal. This is a critical step in the trademark registration process. 

3. USPTO Inquiry Into Name Association 

Generally, if a mark comprises a name, portrait, or signature that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact identify a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual. TMEP Section 1206.03.

A name could reasonably be perceived as identifying a particular living individual when the name in the mark is associated with the applicant or if the name identifies a well-known person. In these cases, the examining attorney will issue an office action asking if the name in the mark identifies a living individual. 

For example, a trademark application for ETHEL’S was filed by Ethel’s Bakery, LLC. The examining attorney reasonably considered that the name might identify a person named Ethel and issued an office action with this inquiry. The applicant responded, stating that the name did not identify a particular living individual and the registration was issued without requiring consent. 

Note that the USPTO may also issue a refusal of a name if the name is primarily merely a surname. 

4. Consider Alternatives

If obtaining consent is impossible or impractical, or if the name is deemed to identify a well-known individual, it may be more strategic to choose an alternative brand name. This avoids the significant hurdles and potential legal challenges associated with Section 2(c) refusals. Our firm can help you brainstorm and clear alternative names. For general inquiries, please visit our contact page or learn more about us.

The Power of Personal Identity in Branding

“Section 2(c) is a powerful reminder of the inherent value and legal protection afforded to an individual’s identity. It’s not just about preventing fraud; it’s about respecting autonomy and preventing unauthorized commercial association. For businesses, this means that while a famous name might seem like a shortcut to recognition, it’s a legal minefield without explicit consent. For individuals, it underscores the importance of protecting their own name as a valuable asset. Always approach personal names in branding with the utmost legal caution and respect for individual rights.”

Sharon Adams, Principal Attorney, Adams Law Office

The Intersection with Right of Publicity

While Section 2(c) is a federal trademark law, it often overlaps with state-level “right of publicity” laws. The right of publicity protects an individual’s right to control the commercial use of their name, likeness, voice, and other aspects of their identity. This is a crucial aspect of intellectual property law.

• State-Specific Laws: Unlike federal trademark law, right of publicity laws vary significantly from state to state. Some states have statutory provisions, while others rely on common law. This can add complexity to California trademark filings. 
• Broader Scope: The right of publicity can be broader than Section 2(c) in some respects, covering not just names but also images, voices, and even distinctive characteristics that identify an individual. 
• Damages: Violations of the right of publicity can lead to claims for damages, including compensation for the unauthorized use of an individual’s persona. 

Understanding both Section 2(c) and relevant state right of publicity laws is crucial for comprehensive brand protection, especially when dealing with public figures or marks that evoke a specific individual. 

Frequently Asked Questions (FAQs)

Q1: What exactly does “consent” mean in the context of Section 2(c)?

Consent means obtaining explicit, written permission from the living individual whose name, portrait, or signature is included in your trademark application. This consent must clearly state that they agree to the use and registration of their identity as a trademark for your specific goods or services. Without this written consent, the USPTO will refuse your application under Section 2(c). This is a non-negotiable requirement for trademark registration.

Q2: Does Section 2(c) apply to deceased individuals?

Generally, no. Section 2(c) specifically applies to living individuals. The only exception is for a deceased President of the United States during the life of his widow, in which case the widow’s consent is required. This is a key distinction in trademark law. For other deceased individuals, their names are typically not subject to Section 2(c) refusal, though other issues like violation of California’s right of publicity law or false suggestion of connection might arise. 

Q3: Can I use a famous person’s name if my goods/services are completely unrelated to them?

Even if your goods or services are unrelated, if the public would still perceive the name as identifying a particular living individual, consent is generally required under Section 2(c). The purpose is to prevent unauthorized association. Additionally, using a famous person’s name, even in unrelated fields, could trigger state-level right of publicity claims or claims of false endorsement. It’s a complex area that requires careful legal analysis.

Q4: What are the consequences of ignoring a Section 2(c) refusal?

Ignoring a Section 2(c) refusal will lead to a final refusal and then abandonment of your trademark application, meaning you will not obtain federal registration. If you proceed to use the mark without registration and without consent, you could face legal challenges from the individual whose name you are using, including lawsuits for trademark infringement or violation of their right of publicity. This can result in significant financial penalties and forced rebranding, making it a costly trademark mistake.

Q5: How can Adams Law Office help me with Section 2(c) issues?

Adams Law Office provides comprehensive legal services to navigate Section 2(c) refusals. Sharon can:

• Advise on the likelihood of a Section 2(c) refusal and strategies to mitigate risk.
• Assist in drafting and obtaining proper written consent from individuals.
• Provide strategic counsel on alternative branding if consent is not feasible.

We are dedicated to helping you secure your intellectual property rights effectively. Contact us today for a consultation.

Conclusion: Respecting Identity, Securing Your Brand

The trademark registration of names, particularly those identifying living individuals, is a nuanced area of intellectual property law. Section 2(c) of the Lanham Act stands as a critical barrier against the unauthorized commercial appropriation of personal identity, ensuring that individuals retain control over how their names, portraits, and signatures are used in the marketplace. The Supreme Court’s affirmation of Section 2(c) in Vidal v. Elster underscores the enduring importance and constitutional validity of this provision.

For startups and established businesses alike, the lesson is clear: while leveraging recognizable names can be tempting, it must be done with meticulous legal due diligence and, crucially, with the explicit written consent of the individual concerned. Failing to do so can lead to costly refusals, legal disputes, and significant rebranding efforts. Proactive engagement with experienced trademark counsel is not merely a recommendation but a necessity to navigate these complexities successfully. By respecting individual identity and adhering to the requirements of Section 2(c), businesses can build strong, legally defensible brands that are both innovative and ethically sound.

For expert guidance on trademarking names, navigating Section 2(c) refusals, and developing a robust brand protection strategy, we invite you to contact Adams Law Office today. Our team is dedicated to helping you secure your intellectual property and build a successful brand. You can also explore our HTML sitemap for a full overview of our site’s content and services. For more insights and updates, subscribe to our YouTube Channel and connect with us on LinkedIn.