James P. Flynn, Managing Director of the Firm and Member in the Litigation and Employment, Labor & Workforce Management practices, in the firm’s Newark office, authored an article in ILN IP Insider, titled “Make Your Mark on History: Connecting Tradenames to Landmark Events, People & Places.”

Following is an excerpt:

The phrase “make your mark on history” is a commonplace one with several meanings and connotations.

It is one offered at many high school and college commencement speeches as an exhortation to graduates to have an impact beyond themselves–as future-President, then-Senator John F. Kennedy said when telling Northeastern’s graduating class in 1956 “to make your mark,” this is part of what “every commencement speaker has said since classes were held in caves or trees.”

It is also often said into mirrors in quiet moments as a reflection of the personal ambition of one determined to go beyond the average or the commonplace in terms of achievement.

Of course, each use stems from the shorter phrase “make your mark,” embodying the mere notion of the archer hitting the target, or maybe even the less educated simply indicating agreement with an initial, an X, or a cross, or at times a craftsman adding “a maker’s mark—essentially personal branding.”

But we interpret that phrase in our own way today—we wish to see what occurs when one literally makes a mark based on, or out of, history by adopting as a tradename a historic event, person, or place.  We want to know what the rules are for doing that, and whether one must have their own connection to that person, place, or event to register the mark. We will look not only at the laws of the United States but at some other jurisdictions as well.

First off, let’s see some of the ways this plays out in the United States. Section 1209.03(x) of the United States Trademark Manual of Examining Procedure (“TMEP”) addresses portions of this inquiry, noting as to historical figure names and fictional character names, that the “determination of whether a mark comprising the name of an historical figure or a fictional character serves as a source identifier or is merely descriptive turns on whether consumers link the mark to a particular commercial entity or whether others have a competitive need to use the name to describe their products.” As one commentator noted, citing examples like Tesla, The Lincoln Project, and others, the prohibition on allowing marks associated with living persons does not apply to historical trademarks:

Historical trademarks are trademarks about an event or person from history. A trademark using a name, portrait or signature associated with a living person may be rejected. Generally, the Trademark Office will not allow a mark associated with a living person without permission. However, historical trademarks involving non-living individuals do not require permission.

[Historical Trademarks are Good for Strong Branding (2020)]

But, interestingly, the United States Supreme Court recently granted review in Vidal v. Elster, Case 22-704, which calls into question the prohibition under 15 U.S.C. § 1052(c) on registering marks concerning a living person without permission; this case has the possibility of altering trademark law significantly and allowing current events to be treated similarly to historic events from a trademark perspective. It also intersects with several recent Supreme Court decisions, such as Matal v. Tam, 137 S. Ct. 1744 (2017), Iancu v. Brunetti, 139 S. Ct. 2294 (2019), and even Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 599 U.S. ____ (2023), and the First Amendment, as I and some colleagues recently described.

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