Since giving birth to octuplets in January, Nadya Suleman, aka OctoMom, has captured nationwide media attention.  Earlier this month Ms. Suleman filed two separate applications to register OCTOMOM as a trademark and a service mark with the U.S. Patent and Trademark Office.  Was she beaten to the punch?  Almost a month earlier Super Happy Fun Fun, Inc. filed its own application to register the mark.

In most trademark cases, the first in time is the first in line.  The person who is the first to use a mark (or file an intent-to-use application) will have priority over anyone who begins using the mark or files for registration at a later point in time.  The OctoMom situation provides an interesting exception to this general rule.

Section 2(a) of the Federal Lanham Act prohibits registration of a trademark where the mark consists of matter which “falsely suggests a connection with persons, living or dead.”  Likewise, Section 2(c) of the Lanham Act prohibits registration where the mark consists of or comprises “a name, portrait or signature identifying a particular living individual except by his written consent.”  Section 2(c) of the Lanham Act operates to bar registration of marks containing not only full names, but also surnames, shortened names, nicknames, etc. so long as it identifies a specific living individual.

Ms. Suleman is widely known by the nickname OctoMom.  There are many news articles which specifically refer to Ms. Suleman as “OctoMom”.  Thus, it seems likely that the Trademark Office will refuse registration of the OCTOMOM trademark to Super Happy Fun Fun, Inc. unless they are able to obtain Ms. Suleman’s written consent.

This presents an important lesson for corporations and individuals who wish to capitalize on the fame of others.  Trademark laws protect the right of publicity of celebrities or any individual.  Obtaining the person’s consent is a prerequisite to registration.  Nikolai & Mersereau, P.A. can help you draft a consent agreement to gain permission to use a name as well as filing for the trademark registration.

Peter Nikolai    (612) 392-7311           Peter.Nikolai@nm-iplaw.com