Richard M. Hoefflin

Trademark Trial and Appeal Board

Dec 10, 2010

No. 77632406 (T.T.A.B. Dec. 10, 2010)

Mailed:
December 10, 2010
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Richard M. Hoefflin
________

Serial Nos. 77632391, 77632400 and 77632406
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Tamara L. Harper of Hoefflin & Associates, ALC for Richard
M. Hoefflin.

Karen K. Bush, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Walters, Bucher and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Richard M. Hoefflin seeks registration on the Principal
Register of three marks, as follows:
OBAMA BAHAMA
PAJAMAS
for “pajamas” in International
Class 25;1

1 Application Serial No. 77632391 was filed on December 12,
2008 based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. No claim is made to the exclusive right
to use the word “Pajamas” apart from the mark as shown. Applicant
makes the claims that “The English translation of ‘Obama’ in the
mark is ‘to lean,’ and that “The name shown in the mark does not
identify a particular living individual.”

THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial Nos. 77632391, 77632400 and 77632406
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OBAMA PAJAMA for “pajamas” in International
Class 25;2
BARACK'S JOCKS DRESS
TO THE LEFT
for “boxer briefs; briefs;
pajama bottoms; pajamas;
sleepwear” in International
Class 25.3

The Trademark Examining Attorney refused registration
pursuant to Section 2(c) of the Trademark Act, 15 U.S.C.
§ 1052(c), because the record does not include the written
consent of President Barack Obama, the name of the living
individual identified in these proposed marks.
After the Trademark Examining Attorney made the refusals
final, applicant appealed each refusal to this Board.
Inasmuch as all three of these appeals involve common
questions of law and fact, and each has been treated in
substantially the same manner by the applicant and by the
Trademark Examining Attorney, we have consolidated these

2 Application Serial No. 77632400 was filed on December 12,
2008 based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. No claim is made to the exclusive right
to use the word “Pajama” apart from the mark as shown. Applicant
makes the claims that “The English translation of ‘Obama’ in the
mark is ‘to lean,’ and that “The name shown in the mark does not
identify a particular living individual.”

3 Application Serial No. 77632406 was filed on December 12,
2008 based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. No claim is made to the exclusive right
to use the word “Jocks” apart from the mark as shown. Applicant
makes the claims that “The name shown in the mark does not identify
a particular living individual,” and that “The English translation
of ‘barack’ in the mark is ‘blessed.’” This latter claim appears
to be based on evidence submitted by applicant discussing the
Jewish name, “Baruch,” at http://en.wikipedia.org/wiki/Baruch.
Serial Nos. 77632391, 77632400 and 77632406
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three separate appeals and are issuing a single decision
herein.
We affirm all three refusals to register.
As noted by the Trademark Examining Attorney, this
subsection of the Lanham Act absolutely bars the registration
of a designation that identifies a particular living
individual absent written consent.4 However, this statutory
provision does not contemplate protection for someone who
coincidentally bears an applied-for name. In determining
whether a particular living person bearing the “name” would
be associated with the mark as being used on the goods, we
must consider (1) if the person is so well known that the
public would reasonably assume the connection, or (2) if the
individual is publicly connected with the business in which
the mark is being used. See Martin v. Carter Hawley Hale
Stores, Inc., 206 USPQ 931, 933 (TTAB 1979); In re Sauer,
27 USPQ2d 1073 (TTAB 1993), aff’d, 26 F.3d 140 (Fed. Cir.
1994); 2 J. McCarthy, McCarthy on Trademarks and Unfair

4 § 2 (15 U.S.C. § 1052). Trademarks registrable on the
principal register
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its nature
unless it ...
(c) Consists 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
Serial Nos. 77632391, 77632400 and 77632406
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Competition, § 13:37 (4th ed. 2010). This provision is
intended to protect the intellectual property right of
privacy and publicity that a living person has in his/her
identity. Id. at §§ 10.07, 28.1 and 28.46. Cf. 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); and Canovas v. Venezia 80
S.R.L., 220 USPQ 660, 661 (TTAB 1983).
In support of her position, the Trademark Examining
Attorney cites to a “Morning Edition” story on January 12,
2009 (after the election of President Obama and days before
his inauguration as the 44th President of the United States –
and just weeks after the date on which these applications
were filed) from National Public Radio (NPR) reporter Steve
Inskeep.5 The news report highlighted many examples of
“Obamification” which the nation had experienced over the
preceding year. Inskeep and members of the American Dialect
Society whom he interviewed defined “Obamifications” as
“words manufactured from Barack Obama’s name.” According to
those interviewed, some of these words originated with

his widow, if any, except by the written consent of the
widow.
5 This transcript was attached to the Trademark Examining
Attorney’s denial of applicant’s request for reconsideration that
issued on May 6, 2010 in Application Serial No. 77632400,
originally http://www.npr.org/templates/story/story.php?storyId=99235478.

Serial Nos. 77632391, 77632400 and 77632406
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supporters and others with detractors. Many were used in a
political sense only, while others tried to capitalize on the
surging demand for Obama merchandise.
Perhaps it is not surprising that an early online
favorite was the rhyming “Obama pajama.” As shown by the
Trademark Examining Attorney , the online Urban Dictionary
actually has an entry for “Obamapajamas -- a form of
sleepware [sic] covered with little
pictures of barrack [sic] obamas [sic]
head. worn [sic] by people who want
to sleep with barrack [sic] obama
[sic].”6 The exhibits that the
Trademark Examining Attorney attached
to her Final action in Application
Serial No. 77632400 included several
copies of an image that appears to be
a photograph of “Obama Pajamas.”7
In the face of this showing, applicant takes a number of
different tacks in an attempt to overcome the Section 2(c)

6 http://www.urbandictionary.com/products.php?txtid=769116 We
hasten to add that we do not accept this online dictionary entry
for the given definition, but merely because it indicates use of
the term to reference the President.

7 http://allthingsobama.blogspot.com/2008/08/ojamas-obama-
pajamas-for-sale.html and http://style.bitchbuzz.com/show-your-
support-by-votingand-obama-pajamas.html

Serial Nos. 77632391, 77632400 and 77632406
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bar. One of applicant’s arguments is that the terms “Barack”
and “Obama,” as used in his marks, do not represent any
particular individual, and certainly not “the United States
President Barack Hussein Obama II.” Applicant’s Serial No.
77632400, appeal brief at 2. Of course, the fact that
applicant filed these three particular applications together
just weeks before President Obama’s historical swearing-in
would seem to belie this representation. In any case, given
that registration is being sought during the presidency of
Mr. Obama, and that the record shows the “obamafication”
discussed above, we have no doubt but that purchasers would
recognize that OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA, and
BARACK'S JOCKS DRESS TO THE LEFT are referring to the Forty-
Fourth President of the United States. To the extent that
applicant is suggesting that Section 2(c) prohibits only
registration of the entire names of individuals, we disagree.
Rather, this statutory sub-section operates to bar the
registration of marks containing not only full names, but
also surnames, shortened names, nicknames, etc., so long as
the name in question does, in fact, “identify” a particular
living individual. In re Sauer, 27 USPQ2d at 1074.
Applicant also takes the position that the record does
not support the conclusion that President Obama is in any
way connected with pajamas, sleepwear and underwear.
Serial Nos. 77632391, 77632400 and 77632406
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Without this showing, applicant argues, there is no bar
under Section 2(c) of the Act. However, we agree with the
Trademark Examining Attorney that in making our § 2(c)
determination as to these three claimed marks, we find that
President Barack Obama, because he is the President of the
United States, is so well known and famous that members of
the purchasing public will associate the individual names
“Barack” and “Obama” as used in applicant’s marks with the
President and will reasonably assume that President Obama is
being identified. Martin v. Carter Hawley Hale Stores,
Inc., 206 USPQ at 933 [No evidence to indicate that “Neil
Martin” enjoys a reputation of such fame as to be
recognizable by the public at large, or that he has been
publicly connected with the clothing field]; and Ross v.
Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999)
[record fails to show that Dr. James W. Ross, Jr. is so well-
known that the mark ROSS would lead to an assumption that the
mark referred to him, and that he is associated with the
electrodes on which the mark ROSS is being used].8 While
lesser-known figures (like Mr. Martin or Dr. Ross) may have

8 Accord, Laub v. Industrial Development Laboratories, Inc.,
121 USPQ 595 (TTAB 1959) [applicant admits an association between
John H. Laub and the flowmeter on which it applied the term LAUB];
and Reed v. Bakers Engineering & Equipment Company, 100 USPQ 196
(TTAB 1954) [Paul N. Reed designed and built the involved ovens,
and the record shows that registrant's customers will identify Mr.
Reed on seeing registrant’s REED REEL OVEN mark].
Serial Nos. 77632391, 77632400 and 77632406
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to show that the consuming public connects them with the
manufacturing or marketing of shirts or electrodes, for
example, well-known individuals such as celebrities and
world-famous political figures are entitled to the
protection of Section 2(c) without having to evidence a
connection with the involved goods or services. See In re
Masucci, 179 USPQ 829 (TTAB 1973) [In spite of any common
law rights applicant may have, EISENHOWER for greeting
cards was refused on the ground that it consisted of the
name of the late President Eisenhower during the life of his
widow, and application for registration was filed without
her consent]; and In re Steak and Ale Restaurants of
America, Inc., 185 USPQ 447 (TTAB 1975) [PRINCE CHARLES for
meat was refused on the ground it identified a particular
living individual whose consent was not of record].
The Trademark Examining Attorney has done an excellent
job marshalling a variety of press excerpts to demonstrate
the obvious – namely, that President Barack Obama is
extremely well known. Over the period of the past several
years, including his historic election to the presidency in
November 2008, each of the names “Barack” and “Obama” has
become so closely associated with this particular historic
individual that the usages of these names in applicant’s
Serial Nos. 77632391, 77632400 and 77632406
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three claimed trademarks will instantly create an association
with the President.
Applicant has listed a large number of third-party
registrations for marks that consist of the first name and
the surname of the six immediate past presidents. The
Trademark Examining Attorney has correctly objected to
applicant’s mere listing of registrations for the above-
referenced marks, which clearly have not been made of
record. However, because applicant has devoted so much of
his argument to the claim that other presidential first
names and/or surnames have been registered, we will
address this argument briefly without discussing
particular registrations.
Specifically, applicant devotes much of his argument to
comparing his applied-for marks to marks in third-party
applications that issued into registrations despite potential
Section 2(c) bars. However, to compare, as applicant has
attempted, the much more unusual given name “Barack” to the
popular first names of immediate past presidents is on its
face immediately distinguishable. Unlike the name “Barack,”
the given names “George,” “Bill” (or “William”), “Ronald,”
“Jimmy” and “Richard” are consistently among the most popular
Serial Nos. 77632391, 77632400 and 77632406
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male names in the country.9 The Trademark Examining Attorney
has also demonstrated with statistical evidence that while
there are tens (if not hundreds) of thousands of persons in
the United States having the surnames of these same six
immediate past presidents, the surname Obama appears in the
same directory only 82 times. Some of the other five past
presidential surnames also appear, for example, as
geographical designations for places within the United
States.
Applicant argues that nothing in any of his three marks
represents any particular individual, and that the terms
“Barack” and “Obama” as adopted by applicant are “arbitrary10

9 See evidence attached to the Trademark Examining Attorney’s
denial of applicant’s Request for Reconsideration in Application
Serial No. 77632406, dated May 6, 2010, at 12-23. As seen from
excerpts from the Social Security Office’s popular names website,
as well as from the Baby Name Wizard website, the names
“Richard,” “James,” “Ronald,” “Bill” or “William” and “George” are
highly-ranked and popular names. By contrast, the given name
“Barack” is not listed or ranked in the top one-thousand names
for any year.

10 The bibliographic database for two of the involved
applications contains applicant’s amended claim that “The English
translation of ‘Obama’ in the mark is ‘to lean’.” This is based
upon applicant’s contention that “the word, ‘Obama,’ is a very
ancient Kenyan surname, has origins in Swahili, found frequently
among the Luo people and is thought to have derived from the root
word “Obam,” which meant something similar to ‘to lean’” [emphasis
added] with a citation to a web page located at
http://babynamesworld.parentsconnect.com/meaning_of_Obama.html, all in
applicant’s response of July 22, 2009 to an Office action in
Application Serial No. 77632400. This Nickelodeon
“ParentsConnect” website appears to be a wiki type of cite where
anyone can add pages. After the Trademark Examining Attorney
refuted this claim with the excerpt from a Swahili-English
dictionary (i.e., no entry for the term “Obama”), applicant dropped
Serial Nos. 77632391, 77632400 and 77632406
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and distinctive.” We find this argument unpersuasive in view
of the evidence of record, indicating the fame of President
Barack Obama and the unusual character of both his first and
last names. In conclusion, we find that all three of
applicant’s claimed marks create a direct association with
President Barack Obama. Accordingly, in the absence of
President Obama’s written consent, these applications are
barred under Section 2(c) of the Trademark Act.
Decision: The refusals to register herein under Section
2(c) of the Lanham Act are hereby affirmed.

this assertion as revealed by his final brief. We have given
applicant’s assertions as to the etymology or meaning of the word
“Obama” no consideration.