The Intersection of Trademark Law and Publicity and Privacy Rights

The legal fraternity has witnessed the dynamics of and the tensions between trademark law with multiple areas of law such as contract law, antitrust law, competition law, etc. Where some laws sync with trademark law, others pose a major conflict with trademark law. Despite the love-and-hate relationship that trademark law has with other disciplines of law, it at least shows the growth of trademark law through the years. The intersection of trademark law and privacy law was witnessed in the landmark case of In re Sauer[1] which discussed the issue of the Right to Publicity when a trademark after a famous personality is applied for. Another extension of trademark law that has been noticed is its relationship with privacy law, specifically the Right to Publicity. Whether these laws are dynamic enough to sync with each other or would it create a conflict is yet to be analyzed. Right to Publicity refers to the right that protects a famous personality against the misappropriation of a person’s name, likeness or other such identifications of personal identity for a commercial benefit[2]. There have been multiple incidents where common people find ways to use the reputations of famous personalities for their commercial benefit without their knowledge or permission.

About the Case

The present case revolves around the famous athlete Bo Jackson who played both professional football and baseball. He was famously known for his athletic achievements and was commonly called by his nickname ‘Bo’. The Applicant, Debbie Sauer applied for the registration of a device mark (the mockup as shown below) ‘Bo Ball’ with a description as “an oblong shaped ball made of white leather with red stitching at the seams”. The trademark registration was refused under Sections 2(a)[3] and 2 (c)[4] of the Lanham Act claiming that the mark falsely suggests an association with the famous professional athlete Bo Jackson and that the mark consists of the word ‘Bo’ that identifies Bo Jackson and hence, the same cannot be registered. The Applicant argued that there are several other celebrities with the name Bo such as Bo Diaz, Bo Bo Osborne, etc., and it necessarily will not associate with Bo Jackson.

As per the Examining Attorney, a four-part test is to be followed while determining the registrability under Section 2 (a) of the Lanham Act. First, the mark must be shown to be the same or closely similar to the person’s previously used name or identity. Second, it must be established that the mark or part of it would be recognized as such. Third, the person in question does not have an association with the applicant’ goods or services. And fourth, the person’s name or identity must be of sufficient fame that when it is used in a mark, there is a likelihood of a connection to be made by the consumer purchasing the good or service under such a mark. Here, evidence has established that Bo Jackson is a famous athlete. Second, there is no evidence that any of the other people with the name Bo have ever been commercially exploited for the sale of goods or services. Third, there does not seem to be any association between the Applicant and the famous athlete. Finally, the record evidence shows that Bo Jackson has achieved such great fame that when his nickname is used, the consumers will make an association with Bo Jackson and no one else.
Analyzing the present case, it appears that trademark law and the right to publicity and privacy have more of a dynamic relation rather than a conflicting tension. Was the case correctly decided? Does this act as a precedent to protect the names of famous personalities? One’s mind would certainly The present case appears to be rightly decided, refusing the registration of the device mark ‘Bo Ball’. When a trademark application includes an actual or deemed association with a famous personality, the registration of the same may get complicated and tricky, for the reasons that it not only deals with one’s right to publicity but also privacy. This may also hamper a celebrity’s endorsement and advertisement reputation along with its individual reputation. This decision shows that trademark law not only focuses on the protection of the consumers and fair competition in the market. It also pays attention to celebrities’ privacy and publicity, where it is necessary such as in the present case. Though trademark law has taken steps by implementing the right to publicity in the area of intellectual property law, yet it must take more steps to improve the protection of such situations involving famous personalities.

[1] 27 U.S.P.Q.2d (BNA) 1073(TTAB 1993).


[3] 15 U.S.C. 1052 (Section 2 of the Lanham Act)- No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it – (a) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States

[4] 15 U.S.C. 1052 (Section 2 of the Lanham Act) – No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it – (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

About Shreya Kapoor 4 Articles
Shreya Kapoor is an Indian attorney and post-graduated from the University of California, Berkeley, and is specializing in Intellectual Property and Technology Law.

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