The HILLARY FOR AMERICA Trademark: A Surprisingly Eventful Saga

It seems like forever since Hillary Clinton has been the presumptive frontrunner in the 2016 Democratic nomination contest.  Voters across America are by now familiar with her campaign branding, including the mark HILLARY FOR AMERICA.  Like the responsible candidate she is, Hillary (through a Hillary campaign entity called HFACC, Inc., doing business as Hillary for America) filed a trademark application for the words-only mark HILLARY FOR AMERICA in the U.S. Patent and Trademark Office (USPTO) on April 13, 2015.  In that trademark application, Hillary claimed she was not yet using the mark as of the filing date.  Instead, she claimed an intent to use the mark in the future in connection with a wide array of goods and services—of course including campaign buttons and the like.  This trademark application is now enshrined for all time as Serial Number 86595033.

All of that was pretty normal.  But today, more than a year later—during which time the HILLARY FOR AMERICA mark has accumulated strong common law rights through extensive use—Hillary’s trademark application still has not reached registration.  That likely wouldn’t be the case if not for one Jeffrey S. Czerkies of Bolingbrook, Illinois.  On April 9, 2015—just four days before Hillary filed her application—Czerkies started using in commerce the trademark HILLIARY in connection with campaign buttons.  This is according to the words-only application Czerkies filed on April 11, 2015—two days before Hillary filed.  The extra “I” in “HILLIARY” is definitely not a typo; Czerkies’ specimen of use makes that clear:

Czerkies specimen

Whoever Czerkies is, he apparently has a low opinion of Hillary’s trustworthiness.  His application is now enshrined for all time as Serial Number 86594555.

So there they were: two marks, both alike in dignity, in the USPTO, where we lay our scene.  Well, actually, not quite alike in dignity, as we’ll see.

On June 8, 2015, the USPTO notified Hillary that Czerkies’ application may preclude the registration of her mark, and thus that her application may be suspended pending the disposition of Czerkies’ mark.  Czerkies had come first to the party in terms of both using his mark and applying to register it, so his mark was senior.  At play here was Section 2(d) of the federal Trademark Act, under which a junior mark may be refused registration because of a likelihood of confusion with a senior mark.  It’s easy to imagine the case for a 2(d) refusal here: the first and most dominant part of Hillary’s mark is virtually identical to the entirety of Czerkies’ mark; both marks cover campaign buttons; and the remainder of Hillary’s covered goods and services are arguably related to campaign buttons.

But of course that wasn’t the end of the story.  A neighboring provision in the Trademark Act, Section 2(c), provided a major plot twist.  Under Section 2(c), a mark can be refused registration if it

[c]onsists 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.

Subsequent case law has applied Section 2(c) to people who will be associated with the mark because they are “so well known that the public would reasonably assume [a] connection” or are “publicly connected with the business in which the mark is being used.”  Notwithstanding Section 2(c)’s unfortunate failure to use “his or her,” this rule clearly protects the very well-known Hillary Clinton.  Even if Hillary becomes President, she fortunately need not wait until she is “a deceased President” in order to benefit from Section 2(c) protection.

For these reasons, Hillary wasn’t the only one to hear from the USPTO on June 8, 2015.  In an Office Action to Czerkies, the USPTO rattled off Hillary’s roles as Senator, Secretary of State, and presidential candidate, and concluded that the public would surely associate Czerkies’ mark with her.  The USPTO briefly addressed Czerkies’ slight misspelling of Hillary’s name:

Please see attached evidence of the intentional misspelling of HILLARY to HILLIARY referencing HILLARY CLINTON.  Prospective purchasers would be likely to see the mark as a direct reference to … Ms. Clinton.  Although the mark is intentionally misspelled, the specimen shows the mark is referencing HILLARY CLINTON as the goods are for campaign buttons and the specimen references the 2016 campaign.

Based on a perusal of the Office Action’s attachments, it appears this purported “evidence of the intentional misspelling” was actually misunderstood.  It seems the USPTO Examiner found a typo in one internet news headline and mistook it for an intentional misspelling of Hillary’s name.  In any event, though, Czerkies’ own specimen does clearly show an association with Hillary Clinton.

Thus, if Czerkies couldn’t show Hillary’s written consent for his mark to be registered, the USPTO would refuse his application under Section 2(c).  (Incidentally, the USPTO also invoked a second ground for refusal, arguing that the way Czerkies was using the mark on his campaign buttons was too “ornamental” to signify the source of the goods, as is required of a trademark.)  On August 6, 2015, Hillary signed a letter consenting to her own trademark application.  Unsurprisingly, she did not extend the same favor to Czerkies’ application.

Hillary USPTO letter.jpg

With no consent letter from Hillary, Czerkies had no way to overcome the Office Action’s Section 2(c) refusal.  His six-month response deadline passed without a peep, and on January 4, 2016 the USPTO issued a formal Notice of Abandonment for his application.  And thus Czerkies’ mark joined the ranks of other similarly-situated marks such as BARAK? OH BUMMER! (Serial Number 77420522) and OBAMA BIN LYIN (Serial Number 77602171), both of which also went abandoned after a Section 2(c) refusal.

With the obstacle of Czerkies’ mark finally removed, Hillary’s application could proceed on its journey toward registration.  On May 10, 2016, her mark reached the next stage in that process (Publication for Opposition).  And that was not a moment too soon—just in time for the Nebraska and West Virginia primaries.

So all’s well that ends well for Hillary’s trademark application.  Yet this story does stand as a cautionary tale for political campaigns.  If Hillary had filed her application just five days earlier, she would have avoided this entire headache.  If anyone ever doubted that a single voice can have any effect in our democracy, just look at how one private citizen managed to throw a wrench into the trademark application of a mighty presidential campaign.

BUDWEISER rebrands to AMERICA, and asks me about it.

imageAnheuser-Busch is temporarily rebranding BUDWEISER to AMERICA. No, this is not a joke. Ronn Blitzer of recently covered this from a legal angle and asked me for my two cents. This excerpt shows only some of it:

But from a legal perspective, can they do that? Can you just name your product after a country? According to Nathaniel Fintz, an intellectual property lawyer in New York, they can, but it’s unlikely they’d be able to register it as a trademark or have any protectable trademark rights. “Marks that are ‘geographically descriptive’ are weak and thus entitled to little or no trademark protection,” Fintz said. “It’s hard to imagine a mark more geographically descriptive than America.”

You can find the rest of my analysis here.