The consent of a living individual is required by the United States Patent and Trademark Office(opens in new tab) (USPTO) if you’re seeking to register a trademark that either (1) identifies a particular living individual, or (2) identifies a deceased president of the United States during the life of his/her widow. Without such written consent, the USPTO is obligated by law to refuse registration of your trademark on either the Principal Register or Supplemental Register. The purpose of this requirement is to protect the rights people have in their own identities and to ensure that consumers aren’t misled about who is responsible for a product or service. Because most people aren’t applying to register trademarks identifying deceased U.S. presidents during the lives of their widows, I will focus this article solely on marks that identify particular living individuals. However, if you want to learn more about that topic, or review the rules concerning consent of a living individual in general, I suggest you read Section 1206 of the Trademark Manual of Examining Procedure (TMEP(opens in new tab)).
When is Consent of a Living Individual Required?
The consent of a living individual is required under either of the following circumstances:
- The trademark identifies a specific living individual who is publicly connected with the business in which the mark is used. The phrase “publicly connected” means the individual is associated in some significant manner with the applicant named in the trademark application, is actually connected to the products/services recited in the application, or is well-known in the relevant field of such products/services.
- The trademark identifies a specific living individual who is so well-known by the general public that a connection between the person and the products/services would be assumed (e.g. celebrities, professional athletes, political figures, etc.).
When Does a Trademark “Identify” a Specific Living Individual?
A trademark can identify a specific living individual when it consists of, comprises, or features one or more of the following:
- A full legal name (e.g. DAVID WILLIAMS or DAVID F. WILLIAMS)
- A surname (e.g. WILLIAMS)
- An abbreviated name (e.g. D. WILLIAMS or MR. WILLIAMS)
- A nickname (e.g. DAVEY WILLIAMS)
- A stage name or pseudonym (e.g. DJ WILLIAMS or YOUNG PROFESSOR DAVID)
- A person’s signature
- A person’s portrait or likeness (such as a drawing or photograph of David Williams’ face)
Essentially, if your trademark could reasonably be perceived as identifying a specific living individual in some form or manner (and your mark does, in fact, identify a specific living individual), then the consent of the living individual will be required before the examining attorney approves your application.
How Do I Provide the Consent of a Living Individual?
There are only two ways in which to provide the consent of a living individual to the USPTO:
- You may submit a copy of the written consent at the time you file your trademark application (this is the preferred method).
- You may submit a copy of the written consent in response to a trademark office action (or provisional refusal) issued after you file your trademark application.
There is one exception to having to provide written consent, and that is when an individual whose name, signature, or likeness appears in the mark personally signs the trademark application. So, if the trademark is DAVID WILLIAMS RESTAURANT, and David Williams personally signed the application, the examining attorney will presume that David Williams consented to the registration of his name as a trademark.
What Must the Written Consent of a Living Individual Include?
The good news is that the requirements for the consent of a living individual are very minimal:
- The consent must be in writing
- The consent must be personally signed by the individual identified in the trademark
- The consent must be dated
- The consent must include a statement in the following format:
“I, [specify legal name of living individual], consent to the registration of my name (or nickname, stage name, or pseudonym, as appropriate), [specify name, nickname, stage name, or pseudonym in the trademark], as a trademark and/or service mark with the USPTO.”
As an example, if your trademark is DAVID WILLIAMS RESTAURANT, and David Williams is a particular living individual, the consent statement would look like this:
“I, David Williams, consent to the registration of my name, DAVID WILLIAMS, as a trademark and/or service mark with the USPTO.”
Now, if the trademark consists of, comprises, or features the signature or likeness of a particular living individual, then the consent statement would instead take the following format:
“I, [specify legal name of living individual], consent to the registration of my signature (or likeness) as a trademark and/or service mark with the USPTO.”
As you can see, the requirements for the consent of a living individual are not onerous or burdensome.
What Happens If You Don’t Provide Consent?
If your trademark identifies a particular living individual, and you don’t (or can’t) provide that individual’s written consent to the registration of his/her name (or signature or likeness) as a trademark, the examining attorney has no choice but to refuse registration of your mark. The examining attorney cannot exercise any discretion or make any assumptions about whether consent has been given (or will be given in the future). The lack of written consent is an absolute bar to registration of your trademark. Therefore, I strongly encourage you to ensure that you’re able to secure the individual’s written consent before spending time and money preparing/filing a trademark application that will be doomed to fail without such consent.
Can I Assist you?
I’m experienced US trademark attorney Morris Turek. If you have any questions about whether the consent of a living individual would be required in your case, or if you need assistance in preparing and submitting a written consent to the USPTO, please don’t hesitate to contact me for your free consultation. I may be reached at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located below. I look forward to hearing from you soon.