Friday, September 14, 2007

Exploiting Baby Dannielynn – trademark style!

Because any story mentioning Anna Nicole Smith and her baby girl, Dannielynn, is a ratings grabber – and with my blog being in its infancy and in need of some ratings – I decided to join the media frenzy.

It was nearly impossible to miss the fact that Dannielynn turned 1 year old on September 7th (e.g., here, here, and here). The media coverage is so intense at times (especially by the people at E.T. and The Insider with their “exclusive” coverage of the birthday party) that one would think Dannielynn is royalty (and treated accordingly). If Anna Nicole Smith was Queen Anna, then that would make her little girl Princess Dannielynn.

So I found it interesting when I came across a Section 1(b) intent-to-use trademark application filed (coincidentally?) on September 7th, for the word mark PRINCESS DANNIELYNN for “Baby bibs not of paper; Baby bodysuits; Baby bottoms; Baby tops; Belts; Caps; Children's and infants' cloth bibs; Cloth bibs; Infant and toddler one piece clothing; Infant cloth diapers; Jerseys.” The named applicant is Tereza Timo, an individual apparently residing in New York. I was almost expecting to see Howard K. Stern as attorney of record.

As the legal protector of the Anna Nicole Smith legacy and estate and by virtue of such fact a protector of Dannielynn, the sole heir of the estate, Mr. Stern being may want to brush up on his trademark law if he wants to oppose registration of this mark. This is assuming that the PTO does not reject it on the basis of Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), which bars registration of a trademark where the mark “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent . . . .” Requiring the consent of a living individual in order to obtain a trademark registration of such person’s name protects the person’s rights of privacy as well as the person’s right of publicity in their own names. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff'g 213 USPQ 594 (TTAB 1982). While Dannielynn may not know it yet, her name is becoming such as famous as her mother’s – and as such has publicity value.

I doubt Larry Birkhead, as Dannielynn’s guardian, will give consent to the registration of his daughter’s name in this way. However, the PTO may not require anything more from the applicant than a statement to the effect of: “The name PRINCESS DANNIELYNN does not identify a living individual.” See TMEP §813. But given the fame surrounding Anna Nicole Smith and baby Dannielynn, can the PTO really accept such a statement without question? But as any experienced trademark prosecuting attorney will tell you, it does happen.

The burden would then be on Mr. Stern to file an opposition to registration based on Section 2(c). “The fact that a name appearing in a mark may actually be the name of more than one person does not negate the requirement for a written consent to registration, if the mark identifies, to the relevant public, a particular living individual. See In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) (affirming refusal to register PRINCE CHARLES, for meat, in the absence of consent to register by Prince Charles, a member of the English royal family).” TMEP 1206.01 (emphasis added). In addition, a name does not have to be the person’s full name, but can be just the person’s surname. See Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999) (§2(c) prohibited registration of surname without consent where the relevant public would associate the good with the opposer given his reputation in the field); but cf. Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (Board found that Section 2(c) did nto apply to surnames except where a particular individual is known by a surname only). However, an argument could be made that with respect to the field related to the relevant goods (baby bibs, in this case), the name Dannielynn is not well known and therefore, the mark would not constitute the identification of a particular person under §2(c). See Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979).

Given the general public’s obsession with Anna Nicole Smith and now Dannielynn, I would suspect that this application ultimately will not be registered. I think this is another case where an individual, without consulting at trademark attorney, decided to claim rights to a name that has some widespread recognition – without contemplating the legalities behind claim such rights. Now whether the registration is stopped by the PTO or by Howard K. Stern is another question.

I can’t wait to hear “I’m Pat O’Brian. Coming up on The Insider . . . getting a trademark on Dannielynn’s name. Howard K. Stern speaks out on one person’s attempt to exploit the name of Anna Nicole’s baby” (ominous music playing in the background).

To read another story from last year about Larry Birkhead and trademarks, see (surprise surprise) The Insider Online’s article “Larry Birkhead Denies Filing for Trademark.” Here is a link to the application for “Goodnight My Sweet Anna Baby” which is still pending and which also faced the same Section 2(c) issue, but with a significant difference since Anna Nicole Smith is no longer living. But it was interesting to note that it was not lost upon the PTO that the Anna at issue in the mark was Anna Nicole Smith – the PTO is requiring the applicant to submit the following statement: “Anna, referring to Anna Nicole Smith, does not identify a living individual.”

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