Inquiry Regarding Name/Portrait/Signature of Particular Living Individual in Mark and How to Comply with this Requirement

 

What Is a Name/Portrait/Signature of a Particular Living Individual Inquiry and Why Is it Issued?

If your mark includes a name, portrait, and/or signature that could reasonably be perceived as that of a particular living individual, then you must provide the USPTO information regarding whether such name, portrait, and/or signature in fact identifies a particular living person. If it does, you must provide both (1) a statement that the name, portrait, and/or signature identifies a living individual whose consent is of record, and (2) a written consent personally signed by the individual named or shown in the mark. For more information about these requirements, see below.

The reason the USPTO requires written consent from a named or shown living person in a mark prior to registration is to protect an individual's rights of privacy and publicity to control the commercial use of his or her identity.

Generally, an inquiry will issue when a full name (first name or initials followed by a surname) appears in a mark that could potentially identify a particular living individual. However, an inquiry will also issue when a first name only, nickname, stage name, title, pseudonym, surname only may also identify a particular individual when the name identifies someone who is well known or famous or has achieved some public recognition under the name in connection with the relevant industry, business entity, goods, or services.

The examples below are names that could or in fact do identify a particular living individual and for which a personally signed written consent and accompanying statement would be required:

  • Full name (BOB JONES, J. K. ROWLING)
  • Pseudonym (ROBERT GALBRAITH, the pseudonym of the writer J. K. Rowling)
  • Stage name (CHER)
  • Title (PRINCE CHARLES)
  • Nickname (THE BOSS for Bruce Springsteen)
  • Signature of a name (Jane Smith)
  • Portrait or likeness of an individual (portrait of former President Obama)

Portrait of President Obama

For more information about the requirements for when a mark includes a name, portrait, or signature, see TMEP §§813 et seq., 1206 et seq. For information about how these requirements relate to the rights of privacy and publicity, see In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010), Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 834-36, 218 USPQ 1, 3-5 (6th Cir. 1983), and 4. J. McCarthy, McCarthy on Trademarks and Unfair Competition, ch. 13 (4th ed. Jan. 2014).

How Can I Comply with This Requirement?

When the Name/Portrait/Signature Identifies/Depicts a Particular Living Individual

If the name, portrait, and/or signature in your mark identifies and/or depicts a particular living individual, you must provide both:

(1) One of the following statements:

"The name shown in the mark identifies a living individual whose consent to register is made of record."

"The signature shown in the mark identifies a living individual whose consent to register is made of record."

"The portrait or likeness shown in the mark identifies a living individual whose consent to register is made of record."

(2) A written consent from the named/shown individual, personally signed by this individual, and using the following language:

"I consent to the use and registration by of my name as a trademark and/or service mark with the USPTO."

"I consent to the use and registration by of the signature of my name as a trademark and/or service mark with the USPTO."

"I consent to the use and registration by of my portrait or likeness as a trademark and/or service mark with the USPTO."

When the Name/Portrait/Signature Does NOT Identify/Depict a Particular Living Individual

If the name, portrait, and/or signature in your mark does not identify or depict a particular living individual, you must provide the following statement:

"The name shown in the mark does not identify a particular living individual."

"The signature shown in the mark does not identify a particular living individual."

"The portrait or likeness shown in the mark does not identify a particular living individual."

How Do I Submit the Required Statement and/or Written Consent?

Responding Online: You should respond to the requirement for clarification regarding the name, portrait, and/or signature in the mark in a nonfinal Office action by using the Trademark Electronic Application System (TEAS) "Response to Office Action" online form (available at http://teasroa.uspto.gov/roa/), which includes any required statement and supporting declaration language referenced in the Office action. You should respond to such a requirement in a final Office action by using the TEAS "Request for Reconsideration after Final Action" form (available at http://teas.uspto.gov/office/rfr/).

TEAS ROA online form instructions for providing the required statement: Answer "Yes" to form wizard question #3. Under the "Name(s), Portrait(s), Signature(s) of Individual(s)" heading in the "Additional Statement(s)" section, check the appropriate box for either identifying the name/portrait/signature of whose consent is being made of record or that the mark does not identify a particular living individual. For technical assistance, contact TEAS@uspto.gov.

TEAS ROA online form instructions for attaching a written consent: Answer "Yes" to form wizard question #3. Under the "Name(s), Portrait(s), Signature(s) of Individual(s)" heading in the "Additional Statement(s)" section, use the "Click here to Attach/Remove Consent(s)" button to upload the JPG/PDF image file of the consent. The size cannot exceed 5 megabytes per attachment. For technical assistance, contact TEAS@uspto.gov.