Following Oprah Winfrey’s acceptance speech as this year’s recipient of the Cecil B. deMille Award at the Golden Globes, many speculated whether the media mogul would throw her hat in the ring as a candidate in the 2020 U.S. Presidential Election. Regardless of whether you would be in support or opposition of such a bid, one point of unsolicited advice…don’t waste your time or money filing a U.S. trademark featuring Oprah’s name.
The applicant of the recently filed trademark application for “NOprah” will be sorely disappointed when he likely receives a notice of refusal to register the mark from the United States Patent and Trademark Office (USPTO). If Oprah runs, this applicant will likely have to find another way to demonstrate (or benefit from) his opposition to her candidacy, because, unless Ms. Winfrey expressly consents to the registration of her name in this application, it’s unlikely that “NOprah” will receive the USPTO’s blessing to adorn “Shirts; A-shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Camouflage shirts; Fashion hats; Graphic T-shirts; Hooded sweat shirts; Hunting shirts; Jackets; Jerseys; Long-sleeved shirts; Night shirts; Sleep shirts; Sport shirts; Sports shirts; T-shirts; Tee shirts; Wearable garments and clothing, namely, shirts; and Wristbands as clothing,” as his application requests.
Under Section 2(c) of the Lanham Act, a trademark application requires written consent by the individual if an applicant attempts to register a mark that includes the name or likeness of a living individual. In the past, the USPTO has rejected PRINCESS KATE because it “unmistakably” points to Kate Middleton, the Duchess of Cambridge (In re Nieves & Nieves LLC), OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT because it referenced President Barack Obama (In re Hoefflin), and BO for sports balls, because it was a nickname of famous athlete Bo Jackson (In re Sauer). Here, it is clear that the applicant is invoking Oprah’s name in his trademark application, so the application is a strong candidate for refusal under Section 2(c).
This is not a new phenomenon. Many before have attempted to secure federal trademark rights in marks featuring the names of public or political figures. For example, to date, applicants have filed over 190 trademark applications for marks containing the word “Obama,” but only two of them have achieved registration. An additional two marks are pending, but like those that have reached registration, these applications list either the Barack Obama Foundation or the Presidential Inaugural Committee 2009 as the owners.
Despite the above, this does not mean that any mark containing a public or political figure’s name or nickname would be denied registration by the USPTO. An application for TRUMP YOUR COMPETITON (Re. No. 4948838) was successfully registered, as well as ACTION TRUMPS EVERYTHING (Reg. No. 4041608), and AQUATRUMP (Reg. No. 4602582). It’s likely that these registrations were successful because, although none received consent from Donald Trump himself, each USPTO Examining Attorney determined that the marks were not referring to Mr. Trump.
As if this application’s future wasn’t already grim enough, in addition to the “living person” refusal, the application will likely face a problem with Oprah’s pre-existing portfolio of trademarks. As a notable public figure, Ms. Winfrey’s media empire is vast, and likely spans the particular goods and services of which the “NOprah” mark attempts to include. Currently, there are over 50 active U.S. applications and registrations for marks containing “Oprah,” presumably all of which are owned by Ms. Winfrey herself, or one of her companies, including Harpo, Inc. and Oprah’s Table, Inc.
Although the “NOprah” applicant may just be attempting to make a political statement, it’s likely this applicant won’t have much to gain from this filing. Instead, he will lose his non-refundable $225 filing fee – perhaps a steep price to pay for a unique lesson in the complexities of U.S. trademark registration. There are many issues to consider when developing and protecting your brand or business, so it’s best to consult an attorney before selecting, and investing in a trademark that might not pass USPTO review.