Around the world, boxer Mike Tyson is known for his devastating power and powerful punching combos. But besides being one of the most explosive fighters of all time, Mike Tyson’s name also carries significant power in the trademark and legal realm.
A celebrity can protect their name under the right of publicity which allows a celebrity to control the commercial use of their name and/or likeness. On October 24, 1999 ICANN approved the Uniform Domain Name Dispute Resolution Policy (UDRP) and accompanying Rules of Procedure which required that in a case the complainant must demonstrate that he (she) has rights in a trademark. In fact, “rights in a trademark” doesn’t necessary mean having a registered trademark. For example, despite Julia Roberts not having a registered TM, the panel emphasized that “the Policy did not require that the Complainant should have rights in a registered trademark or service mark”.
The above scenario highlights the UDRP’s acceptance of claims based on common-law trademark rights in celebrity domain cases. Unlike registered trademark rights, common-law trademark rights are established from actual use of the name in commerce. As such, celebrities may establish the existence of a common-law trademark right based on their recognized accomplishments or public persona. Celebrities who are well known and able to show a current and direct correlation of their name with a brand or service typically have no problem.
So would Tyson face an issue establishing common-law trademark rights with the UDRP? Most likely not, but Tyson has already taken proactive steps to avoid the issue by trademarking MIKE TYSON (US Serial Number 3489868). In fact, Tyson’s trademark protection is incredibly broad, encompassing a number of different goods and services. Furthermore, Tyson recently filed for the mark “MIKE TYSON PRESENTS…,” along with the name mark ” Tyrannic”.
Given the USPTO’s strong involvement throughout the trademarking process, it is unlikely random individuals would be able to trademark the name of a celebrity. Consequently, celebrity name disputes generally appear with cybersquatters who purchase domain names. To have a claim against cybersquatters, celebrities must prove their case before the UDRP by establishing three elements: First, the celebrity must establish that the domain is identical or confusingly similar to their trademark. Second, the celebrity must prove that the domain owner has no legitimate interest in the domain name. Third, the celebrity must prove that the domain name is registered and being used in bad faith.
Such was the case for Sting, who could not prove trademark rights in the name Sting (Gordon Sumner, p/k/a Sting v. Michael Urvan, D2000-0596) because it was not registered as a trademark. Despite acknowledging the wide and long lasting use of Sting’s name and worldwide reputation, the panel adjudging the case denied Sting’s request on the basis that the word “sting” in the English language has “common usage” with a number of different meanings. Sting’s case is significantly different from other cases, where he was attempting to protect his performing name rather than his actual name.
In comparison, famous actor Pierce Brosnan (Pierce Brosnan v. Network Operations Center, D2003-0519) was able to easily prove trademark rights in his name in a recent case.
If these are celebrities, let’s take the case of the biggest celebrity of them all. President Obama’s surname has been applied for in so many unusual ways its a wonder USPTO doesn’t declare a Cease and Desist!
A recently filed mark for “THE OBAMA BOBBER” (US Serial Number 77946074) uses the following description, “Fishing equipment in particular a fishing line float.” And according to the latest news, the NOAA (National Oceanic and Atmospheric Administration) and the administration was last heard planning the future of recreational fishing access in America by potentially banning sport fishing in America.
With the onslaught of OBAMA-related marks filed, the USPTO has done its best to regulate the situation. In the case of OBAMANOPOLY, the USPTO sent the application an office action letter stating, “Registration of the present application is refused under Section 2(c) of the Trademark Act, as the record does not include the written consent of Barack Obama, the name of the living individual identified in the proposed mark.” The office action letter further goes on to remark, that ” …the fact that a name appearing in a proposed mark may actually be the name or nickname of more than one person does not negate the requirement for a written consent to registration, so long as the proposed mark identifies, to the relevant public, a particular living individual or deceased United States president whose spouse is living.”
So what’s the moral of the story: If you plan on trademarking and cybersquatting on the name of a celebrity or public figure, prepare yourself for an uphill, potentially losing, battle. In fact, just referencing a celebrity’s name may land you in hot water; just ask Rosa Parks and the rap duo Outkast (LaFace Records v. Parks, 03-504).