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Just when you think you have seen it all, there is always something new to surprise you. In over 25 years of legal practice, that maxim holds true today more than ever. Sadly, it proved itself once again when I learned that someone has filed a federal trademark application for the name “George Floyd.” The applicant is not one of Floyd’s relatives or his estate, but a third party that, as far as I can tell, seems to have no affiliation with Floyd. Any number of reasons may exist for this filing, but there is an opportunity here to shed some light on obtaining trademark registrations for surnames (let alone those of deceased individuals) that is worth a closer look.
First and foremost, there is little information on the underlying motives for the filing of the trademark application with the USPTO, but there is a lot we can glean from the filing and its filing basis. The federal trademark application was filed on an intent-to-use basis by an individual, Munemom Mushonga, of Miami, Florida. The trademark application, Ser. No. 88949571 was filed in International Class 41 for “[p]roduction and distribution of television shows and movies.” As an intent-to-use application, it would be safe to assume that Mushonga intends to create (or have created) content for television shows or movies involving Floyd’s horrific death while being placed under arrest by a now-former Minneapolis police officer. So there is an individual who seeks (but has yet) to use Floyd’s name as a trademark for content most likely involving Floyd’s death.
Of course, this applicant is not the first to try to capitalize off of trending terms or catchphrases from current events. In fact, my first article for Above The Law addressed the opportunistic attempts to trademark “covfefe” and why the reasons for doing so were misguided and ill-advised. What is important to understand, here, however, is that this applicant is dealing with far more issues than he realizes and little prospect of success on the merits.
The most obvious issue is the fact that a third-party is trying to trademark a person’s name. Oddly enough, this is not problematic per se — the USPTO permits a person’s name to operate a trademark and obtaining registration. Specifically, Section 813 of the Trademark Manual of Examining Procedure (TMEP) states that “[w]hen a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow, respectively.” The operate requirement here is that consent of the living person (whether that of the living person whose name is being trademarked or the widow of the deceased president). Needless to say, those requirements can’t be met here, but it is not the end of the inquiry.
A bigger issue here is that the name is primarily a surname, and as such, will require proof of secondary meaning. Specifically Section 1211 of the TMEP requires that “a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness under §2(f).” Whether a mark operates primarily as merely a surname depends on the primary significance of the mark as a whole to the purchasing public, and is shown by evidence supporting the acquisition of secondary meaning. The Trademark Trial and Appeal Board (TTAB) has identified specific five examples of inquiries that may lead to evidence regarding such perception: (1) whether the surname is rare, (2) whether the term is the surname of anyone connected with the applicant, (3) whether the term has any recognized meaning other than as a surname, (4) whether it has the “structure and pronunciation” of a surname, and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. Although not exhaustive, it doesn’t take a great deal of investigation to find that the trademark operates as primarily a surname, and that proof of secondary meaning will be essential to registration. I would not get my hopes up on that one.
Whether the applicant is seeking to exploit this tragedy is something I will let the readers decide, but it is hard to escape the notion that this attempt to register Floyd’s name is an exercise in opportunism and misunderstands the bases necessary to qualify for federal trademark registration. It’s bad enough that Floyd has his life taken from him, but it’s something else entirely for someone who does not appear related to him to exploit his name after death. Perhaps this applicant wishes to produce content that has a noble purpose to inform and shape the national conversation, maybe even create a vehicle to financially assist Floyd’s family while keeping his name alive as a brand to help eliminate police brutality and racism. Or … it’s just another attempt to make a buck, which if true, is tragic. In any event, the USPTO will not let this application proceed without strong evidence of secondary meaning. Turns out there is a lot more to federally registering surnames as trademarks than most people realize, and in this case, that fact is most definitely a good thing.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.