A recent office action by the U.S. Patent and Trademark Office (“USPTO”) illustrates what can happen when someone applies to register a trademark or service mark in the name of a famous (or infamous) person without obtaining that person’s permission. In Application No. 85367412 (Sept. 27, 2011), Grant Media LLC of San Francisco, California, applied for registration of the word mark “CASEY ANTHONY” in International Class 41 for “Entertainment in the nature of an on-going special variety, news, music or comedy show featuring namely broadcast over television, satellite, audio, and video media.”
In a non-final office action refusing registration and directing the applicant to supply additional information, the USPTO observed that Casey Anthony is the name of a Florida woman who, in a highly publicized, sensational proceeding, was tried for and acquitted of the alleged murder of her two-year-old daughter, Caylee Anthony. Indeed, Time magazine referred to Anthony’s trial as “the social media trial of the century.”
Section 2(a) of the Trademark Act of 1946, 15 U.S.C. §1052(a), provides in relevant part that “[n]o 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 – (a) consists of or comprises . . . matter which may . . . falsely suggest a connection with persons living or dead.” The U.S. Trademark Trial and Appeals Board has set forth the following test for determining whether a mark sought to be registered falsely suggests a connection with a person:
1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person; 2. The mark would be recognized as such because it points uniquely and unmistakably to that person; 3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and, 4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
In refusing registration of Grant Media’s application, the USPTO wrote–
Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Casey Anthony. Although Casey Anthony is not connected with the goods and/or services provided by applicant under the applied-for mark, Casey Anthony is so famous that consumers would presume a connection.
The USPTO notified the applicant that although its application was refused, it may respond to the refusal by providing additional information and arguments in favor of registration. In particular, the office action stated that Grant Media may respond by either (i) providing a statement that, as used with the mark, “Casey Anthony” does not refer to a living person; or (ii) providing a statement that the mark does identify a living person who has consented to use of the name as a mark, and providing a written consent form from the individual identified by the mark. The office action also directed the applicant to specify whether it is already using the mark in commerce(which requires submission of a specimen of use) or is an “intent-to-use” application.