Campaign season makes ripe political commentary. On February 28, 2016, comedian John Oliver featured a segment on his show “Last Week Tonight” about the Republican frontrunner, Donald Trump.
This segment was particularly noteworthy because John Oliver did more than just provide commentary; he tried to dissociate Donald Trump from his brand by uncovering the ancestral Trump name, “Drumpf.”
John Oliver’s premise is that Donald Trump’s popularity as a presidential candidate is at least partially due to the notoriety of his brand—TRUMP. Many voters associate the TRUMP brand with wealth, success and power, attributes that voters believe make Donald Trump a formidable political contender. Understanding the influential power of a strong brand and dismayed by Donald Trump’s gaining popularity, John Oliver attempted to separate Donald Trump, the man, from TRUMP, the brand.
On February 26, 2016, two days before the show aired, Drumpf Industries, LLC. filed an intent-to-use trademark application for DRUMPF in Class 41 for “Provision of a website featuring multimedia content.” In addition to the DRUMPF trademark, John Oliver spearheaded the campaign “Make Donald Dumpf Again” a play on Donald Trump’s campaign slogan “Make America Great Again.” Hats reading “Make Donald Drumpf Again” were available for purchase on www.hbo.com. John Oliver’s campaign even went as far as launching a website www.makedonaldjdrumpf.com, where users could download a “Drumpfinator” browser add-on for Google Chrome.
Almost overnight, the DRUMPF mark became “in use,” but unfortunately for Donald Trump naysayers, trademark registration requires more than use. Under 15 U.S.C. § 1052 of the Lanham Act registration of a designation that identifies a particular living individual, absent written consent, is barred.
When a trademark application is filed for name, it typically receives a Section 2(c) refusal. For purposes of §2(c), a “name” does not have to be a full name – it also applies to first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed. This is not the first time that a famous political figure’s name was used in connection with a trademark application. In 2010, the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT were barred from registration under §2(c) because the marks created a direct association with President Barack Obama. In re Hoefflin, 97 USPQ2d 1174.
Names can be registered as marks, but consent is required if the individual bearing the name will be associated with the mark or if the person is well known or publicly connected with the goods and services. Other pending registrations, including DUMP TRUMP, I BID NO TRUMP, and TRUMP MAFIA have already received §2(c) refusals based on a lack of consent from Donald Trump. Given the nature of these marks, it is doubtful Donald Trump will lend his consent for registration.
The DRUMPF application, however, is a bit more complicated since Drumpf is not actually Donald Trump’s surname. It is allegedly Donald Trump’s original family name that has long since been changed. Assuming that there are no long-lost Drumpf relatives still using the name, Drumpf may not technically fall under the “living person” requirement of §2(c) since the Drumpf name has been reportedly changed and is not a known living person. Or at least this was John Oliver’s hope in filing the application.
Despite the potential argument that Drumpf is not a living person, TMEP §1206.03 establishes parameters for when Examiners must inquire about a potential surname. The inquiry standard hinges on whether the mark could reasonably be perceived as identifying a particular living individual. If there is sufficient evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion in issuing a §2(c) refusal.
Whether the relevant public would perceive a first name, nickname, or surname as identifying a particular individual usually depends on whether the particular individual has achieved some public recognition under that name. In one case, a mark containing BO used in connection with a sports ball was barred under §2(c) because BO is the nickname of a well-known athlete. In re Sauer, 27 USPQ2d 1073.
Donald Trump has certainly achieved some public recognition and association with DRUMPF. John Oliver’s YouTube video featuring the “Drumpf” episode has already amassed over 20 million views. Needless to say, “Drumpf” has gained enough popularity that any socially-attuned Examiner, or at least one proficient with the Google search engine, could reasonably determine that DRUMPF has become publicly associated with Donald Trump. John Oliver has made the DRUMPF mark so well-known that he may have potentially interfered with his ability to obtain a trademark registration.
Ironically, if the DRUMPF trademark application receives a §2(c) refusal, John Oliver has achieved his purpose: Donald Trump will be associated with DRUMPF. Regardless of the USPTO’s decision, John Oliver should be happy with the result: either the DRUMPF application is not associated with a living person and proceeds to potentially obtaining registration, or an Examiner rejects the DRUMPF application due to association with a living person, Donald Trump.
We will have to wait until November to know whether John Oliver was truly successful in dissociating Donald Trump from his brand.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Lisa Greenwald-Swire is a trademark and copyright principal in the Silicon Valley office of Fish & Richardson P.C., head of the Silicon Valley office trademark and copyright practice group, and an elected member of the firm’s management committee. Her practice focuses on global trademark counseling and prosecution including brand...