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Political animals

McAfee & Taft tIPsheet - August 2012

 
By Rachel Blue

NOBAMA. MAGIC ROMNEY UNDERWEAR. OCCUPY. OBAMA BIN LADEN.

It’s an election year, so it’s no surprise that slogans and sound bites are on the uptick. Both political campaigns and those hoping to cash in on a clever turn of phrase are getting into the act, filing trademark applications for slogans, candidate names and recognizable campaign symbols. In the spirit of full disclosure, here are a few facts about political trademarks:

Trademarks that contain the name of a living individual require that individual’s consent to the use and registration. With a few exceptions, political candidates are typically living individuals, which means they must consent to the use of their names in a trademark filing. So, Sarah Palin can file for a registration of her own name, but her opponent cannot try to preempt her use of her own name by beating her to the trademark office. Trademark law is meant, at least in part, to protect the public from confusion. Most of us would assume that if we saw an individual’s name associated with a slogan, or used as a trademark, that the individual is associated with the goods or services behind the trademark in some way. So, applications sought without the candidate’s approval are likely to be refused registration on at least two bases: absence of a consent, and a false suggestion of a connection to the candidate. One federal applicant, VDBL, LLC, was denied registration for MAGIC ROMNEY UNDERWEAR on the grounds that the public would assume a connection to the Republican nominee, who – no surprise – did not endorse the application.

If that’s the case, why would a candidate bother to register his or her own mark? If no one else can use it, does it really need the protection of a trademark registration? Possibly.

First, a registration may be a useful tool in controlling social media publicity, since social media site takedown policies often give deference to trademark holders. Second, campaigns can and do register trademarks and leverage the candidate’s name as a “brand,” profiting from the sale of merchandise bearing the trademarks. President Obama’s re-election committee, Obama for America, registered several trademarks, including various iterations of its “rising sun” logo trademarks. Romney’s campaign, clearly thinking ahead, filed application 77/231852 for MITT ROMNEY FOR PRESIDENT back in 2007, indicating an intent to use that slogan on everything from baby bottles to cocktail shakers. The application was abandoned in 2008 following a failure to respond to a requirement from the U.S. Patent and Trademark Office.

Can you get around the need for consent with a clever play on words? Not necessarily, as some applicants have learned. Applicant Napoleon Trujillo filed for “NOBAMA 2012-2013” last August, but was refused registration on the basis that a name, portrait or signature which identifies a particular living individual requires the written consent of such individual.” The key question wasn’t whether the mark contained the name “Barack Obama,” but rather whether it identified him to the relevant public. In another application, registration of the mark ‘Obama bin Laden,’ was refused on the grounds that conflating the names of a U.S. Senator (at the time) and the world’s leading terrorist was ‘scandalous’ and wrongly suggested a connection between the politician and the mass murderer. The examiner also noted that registration was refused because ‘the record does not include the written consent of Barack Obama and Osama bin Laden, the names of the living (at the time) individuals identified in the proposed mark.’ 

During the Clinton presidency, Jerry’s Subs & Pizza found themselves the recipient of a letter from the White House. The letter, which demanded that the restaurant stop airing a Bill Clinton sound-alike on radio ads intoning “Where’s the cheese?” may not have been one the owners framed for posterity. More recently, the Obama campaign successfully enjoined Demstore.com from selling bumper stickers, buttons and other materials featuring the well known “O” design used in both the 2008 and 2012 presidential campaigns.

Opinions are never in short  supply in an election year. Some trademark filings don’t contain the candidate’s name, and are simply efforts to express an opinion while selling goods or services. This invites an argument that such marks are some form of “free speech” and should not be restricted by the statutory restrictions placed on other trademarks. In some cases, the way in which the slogan is used can answer the question. A trademark, by definition, is a word, symbol, or slogan used to identify the source of goods or services. If you aren’t using the slogan to identify goods or services, it’s not a trademark, and the free speech argument is effective. However, if you are using the slogan to sell something, it’s commercial speech, so it’s subject to the same rules and restrictions as any other trademark would be.

One basic rule is that the first user of the slogan is its owner. Not the first filer, the first user. Chris Armes, an individual from Massachusetts, filed two trademark applications for BELIEVE IN AMERICA, to be used in connection with shirts, hats and wristbands. Used with goods? Check. Avoid the candidate’s name? Check. No prior filed application by the Romney campaign? Check. Nevertheless, the campaign filed an opposition to Mr. Armes’ marks, claiming it had used the slogan prior to Armes in its political rallies, and on promotional materials for Romney’s campaign, including t-shirts, and thus the Romney campaign, not Armes, was entitled to registration of the term and the attendant exclusive right to use the slogan. The oppositions are currently pending at the U.S. Trademark Trial & Appeal Board.

You may be wondering just why anyone would bother with filing a trademark application with a political slogan. It’s a good question. Although trademark registrations before the USPTO offer their owners significant benefits – namely, the exclusive right to use the trademark in U.S. commerce – it generally takes a minimum of about 10 months, start to finish, for a federal trademark application to work its way from the filing date to a registration. Depending on the quality of the application, and whether or not the trademark was being used when the application was filed, it could take much longer. Given the shelf life of a political campaign (2012 Republican primary candidate Thaddeus McCotter’s campaign lasted just 13 weeks), the slogan or trademark might be outdated before the registration issues. The exclusive right to use the slogan in commerce could wind up being worth about as much as a campaign promise.


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