An unrepresented individual filed a trademark application last week for GEORGE FLOYD for “production and distribution of television shows and movies” and his name is not George Floyd, obviously. This kind of opportunism must stop. Since George Floyd’s death, there have also been ten trademark applications filed for I CAN’T BREATHE or close variations thereof, mostly for clothing and surgical masks goods. All of the I CAN’T BREATHE applications will be refused registration on grounds of failure to function as we discussed in our blog post on COVID-related marks here. We support those businesses who are genuinely trying to pivot during these difficult times, but this is not the time to capitalize on a man’s brutal murder. According to the trademark rules of practice, the GEORGE FLOYD trademark will not be approved for registration, and in the unlikely event it could get approved, this individual faces legal battle outside of the USPTO if he starts to produce a GEORGE FLOYD branded TV show. Let’s take a closer look at the process and the hurdles he’s likely to face.
Why the USPTO will refuse the GEORGE FLOYD trademark application
Remember that a trademark is a word used by an individual or company to identify the source of its goods in the marketplace and distinguish them from those sold by others. This individual may have the best of intentions to develop relevant and much needed television programming to inform the race relations dialog. Does that matter? Not to the USPTO. The rules are clear. If you are trying to register the name of a living individual, you must secure the consent from the individual. Is it possible in this instance because George Floyd is dead that the mark will be granted? Not likely. The mark will likely be refused registration under Section 2(a) of the Trademark Act for what’s called a false affiliation.
In January 2016, more than a year after Laquan McDonald had been shot 16 times by disgraced Chicago Police Officer Jason Van Dyke, a trademark application for LONG LIVE LAQUAN was filed in connection with t-shirts. That application was swiftly refused registration under Section 2(a) of the Trademark Act “because the applied-for mark consists of or includes matter which may falsely suggest a connection with the estate of the recently deceased Laquan McDonald. Although neither Laquan McDonald nor his estate is connected with the goods provided by applicant under the applied-for mark, Laquan McDonald is so famous that consumers would presume a connection.” This was the same reason Tom Brady was unable to register his TOM TERRIFIC trademark in 2019. I expect the USPTO will issue a similar refusal for the GEORGE FLOYD trademark application but there could be another cause of action outside of the USPTO if this individual tries to commercialize these services.
Rights of Publicity Laws
If this trademark applicant were to proceed and the trademark owner began using the mark in connection with producing a TV show, the Floyd family may have a rights of publicity cause of action against him. While there is no Federal law for rights of publicity, the vast majority of states (70%) have rights of publicity laws, either via statute or common law, and those rights can apply to living and dead people. Generally speaking, rights of publicity prevents the unauthorized commercial use of an individual’s name, likeness, image, voice or other recognizable aspects of one’s persona. The Floyd family may have a cause of action to sue this trademark owner if he were to proceed to commercialize George Floyd’s name without their consent since it would imply an affiliation with George and they have every right to control to who or if his name is commercialized.
UPDATE: On June 15, 2020, the USPTO records were updated to reflect that this applicant expressly abandoned his application.
While many businesses are trying to pivot right now, flagrant opportunism like this is in poor taste and even if well-intentioned, ill advised. Applications such as these will not get through the USPTO, and even if it did, the Floyd family has many legal maneuvers at its disposal to ensure George Floyd’s name is not commercialized without its consent. It’s always best to consult with your trademark counsel before filing a trademark application to ensure you are proceeding properly. If you have a trademark question or need help with your trademark application, please contact us for more information.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at email@example.com.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.