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Celebrity, Trademark, and the Right of Publicity
Whether or not a celebrity’s name or likeness can be used in someone else’s proposed trademark is not an uncommon question on internet legal advice message boards.
The short answer—unless you are that celebrity—is ‘No,” but it is a question worth unpacking and explaining in better detail than that.
The answer comes from both the perspective of US trademark law and from the perspective of a non-trademark legal concept known as the right of publicity.
Celebrity Names and Likenesses and Trademark Registration
With regard to trademark registration, it is important to remember that, unlike copyright or patent law, Federal trademark protection in the US does not aim to protect the creator or author of a work, or inventor of a machine or system.
In the US, Federal trademark registration is purposed to protect consumers’ right to know what they are buying and from whom.
Yes, a registered trademark provides a number of advantages for the owner of the trademark, including a legal presumption of ownership; the exclusive right to use the mark across all 50 states; the right to file a declaration of incontestability; public notice of your registration via the US Patent and Trademark Office (USPTO) database; the right to have US Customs block infringing goods; and the right to sue for infringement.
However, ultimately, the purpose is to provide US consumers the comfort of knowing that, when they buy a product with your name or logo on it, it is being sold by you.
Thus, with regard to the use of a celebrity’s name or likeness in your trademark, the question would be whether or not the use of that name or likeness uniquely identifies your product or service.
Unless you have a licensing agreement with a celebrity to produce, for example, Bobcat Goldthwait’s Famous Microwave Dinners, that name or likeness would be uniquely identifying to the majority of consumers viewing it—the celebrity him- or herself. Not your product or service.
Further, the USPTO, which approves or rejects Federal trademark registration applications, requires that any use of a name, portrait, or even the signature of a living person appearing in a trademark registration application be accompanied by the explicit consent of that person to use in the mark.
You can’t just grab somebody’s name and use it to advertise your product without their say-so, in other words.
Celebrity Names and Likenesses and the Right of Publicity
The further reason why you can’t utilize a celebrity name or likeness (or signature) in a Federal trademark registration is that only the celebrity—or persons or entities with whom the celebrity has signed a licensing agreement—have what is known as the right of publicity.
The “right of publicity” is not derived from The Lanham Act (a.k.a., the US Trademark Act).
This right to utilize one’s own name, likeness, or other recognizable features for one’s own commercial use is a function of state common or statutory law in the US rather than Federal law.
It may, in some states, fall under the umbrella of a right to privacy or via unfair competition law, but the end result is the same: If you utilize another’s (celebrity or not) likeness or name without consent, you may be sued for civil (money) damages and surely for an injunction requiring that you cease and desist.
In Michigan, where The Hilla Law Firm is headquartered, both the right of publicity and the right to sue for invasion of privacy by “appropriation” is recognized.
The Federal Sixth Circuit Court of Appeal has not only held likewise but has also held that the right of publicity is “descendible,” meaning that the right survives the death of the individual bearing the right, allowing descendants to sue for inappropriate use.
Celebrity Names & Likenesses and Federal Trademark Registration: The Bottom Line
The bottom line with regard to trademark registration is that, if you are not sure whether or not your proposed trademark can be properly registered at the Federal level, you need to consult a knowledgeable Michigan trademark attorney.
The Hilla Law Firm is located in the Detroit area but represents clients nationally for trademark matters and offers free video or telephonic consultations.
If you are interested in discussing the filing of an initial trademark application or defending an office action already filed, please contact us at (734) 743-1489 to discuss your matter or click here to directly schedule your initial trademark consultation into our calendaring system.