1. Consent: The U.S. Patent and Trademark Office (USPTO) typically requires written consent from the individual whose name is being trademarked, especially if it's a well-known person or celebrity. Without this consent, the application is likely to be rejected.
2. Use in Commerce: The trademark must be used in commerce. This means it must be used in the sale of goods or services in a way that is publicly recognizable.
3. Likelihood of Confusion: The trademark must not cause confusion with existing trademarks. If the celebrity's name is already trademarked for similar goods or services, this could be a significant obstacle.
4. False Association: The trademark should not falsely suggest a connection with the celebrity. The USPTO is careful to avoid any trademark that might imply a false endorsement or association.
5. Intent to Use: If the trademark is not currently in use, the applicant must demonstrate a bona fide intent to use the name in commerce in the future.
On 8-3-19, the United States Patent and Trademark Office implemented a rule requiring foreign companies and individuals domiciled outside of the United States to use a licensed U.S. attorney to file trademark applications, renewals, and almost any other document before the USPTO.
Here is an overview of the new rule:
The USPTO requires foreign applicants (whose domicile or principal place of business is not located within the U.S. or its territories) to be represented by licensed U.S. counsel or, in limited cases, an authorized foreign attorney (i.e. registered Canadian agent)
This rule applies to all filings before the USPTO, including applications, Office Action responses, “proof of commercial use” filings, Priority Actions, Examiner’s Amendments, renewals, assignments, Petitions to the Director, and even simple address changes
Applicants flagged under this rule will be issued an Office Action requiring the appointment of U.S. counsel within three months of the issuance of the Office Action.
