The Lincoln Project is no stranger to controversy. The group rose to prominence this year through its pointed and often-viral television ads opposing President Trump's re-election. However, having been created for the purpose of battling one president, it now finds itself in a dispute with another - or at least with someone who portrays him.
Christopher J. Small, owner of a federal trademark registration for THE LINCOLN PROJECT, has been providing educational and entertainment services regarding the 16th President of the United States since 2003, including through portrayals of Mr. Lincoln himself. Earlier this month, Mr. Small filed a notice of opposition before the Trademark Trial and Appeal Board (the "Board") against The Lincoln Project's application for the same trademark for "political fundraising services." Mr. Small alleges trademark infringement due to likelihood of confusion, alleging in his notice that "a large number of consumers has already demonstrated their confusion...by contacting Petitioner regarding Applicant's activities. While some contacts have been positive in nature, others have been threatening." The Lincoln Project has until January 10, 2021 to answer Mr. Small's notice.
While there is no way to know the potential outcome of the proceeding at this point, it does serve to illustrate several valuable points for new trademark owners and applicants:
- The Trademark Office Examiner who initially assessed the Lincoln Project's application is not the final arbiter of the validity of its trademark. When the Lincoln Project filed its application for THE LINCOLN PROJECT, the Examiner did not cite Mr. Small's registration for the same mark for different services as a potential bar to registration. However, that does not mean that the Lincoln Project's mark does not infringe Mr. Small's registration. That will be for the Board to decide, should the case get that far.
- But, wait a minute, how can either of them own a trademark in the name of a president? Is that allowed? Yes, it is! There is no per se bar against using historical figures' names as trademarks. The Lanham Act does prohibit the use of a trademark that "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 his widow, if any, except by the written consent of the widow" (emphasis added). When it comes to deceased U.S. Presidents whose widows are also deceased, as long as the trademark is not descriptive (or does not run afoul of any other bar to registration), the fact that it consists of the name of a historical figure is not, in and of itself, a problem.
- Ok, fine. But are consumers really likely to be confused when one mark is being used for "political fundraising services" and the other is being used for "education and entertainment services?" While the answer is ultimately up to the Board, it's useful to remember this key axiom of trademark law: the parties' goods and/or services do not have to be identical or even competitive in order to find that there is a likelihood of confusion. Moreover, if Mr. Small submits persuasive evidence supporting his claim of actual confusion, the Board will consider that as well when determining if a likelihood of confusion exists.
You can read the notice of opposition for yourself here. We will stay tuned to see if there are any interesting developments.
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