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March 18, 2016

Drumpf ™?

TV host John Oliver made waves recently when he launched a campaign on his HBO show Last Week Tonight to “Make Donald Drumpf Again,” a reference to the Republican presidential frontrunner’s less-than-sonorous historic family name. As part of that 21-minute skit, which has been watched an astounding 21 million times on YouTube in just a few days, the host claimed to have filed for trademark protection for the term DRUMPF. Did he? Can he?

Yes, and maybe. The application for the mark, now available on the USPTO website as Serial No. 86921166, shows that he did file an intent-to-use federal service mark application for DRUMPF in connection with, “Provision of a website featuring multimedia content.” Or, strictly speaking, a New York-based Delaware company called Drumpf Industries, LLC (dutifully formed a few weeks ago) filed it. So, yes, Oliver is on file. Were he serious about registering, however, the application faces a few challenges, any one of which might be raised by a trademark examiner (or even Mr. Trump himself, should it ultimately be approved by the Trademark Office).

First, Section 2(a) of the Trademark Act forbids another from registering a mark which “falsely suggest[s] a connection with persons, living or dead.” This raises the interesting question of whether DRUMPF falsely connects with Trump. Before the show aired, the answer would almost certainly be, no. Back then, no one had heard the term let alone associated it with the candidate. Now, however, each one of the more than 21 million viewers of the YouTube clip and the show, and all the members of the greater public that learned of the name through other media outlets, associate DRUMPF with Trump. Indeed, that was the very design of the thing. The more important question, though, is whether it is a “false” connection. I would argue no, it is not. It is a connection created by a comedian expressing himself. The public connects the term with Mr. Oliver’s tirade as much (if not more) than Trump. In that regard, it is a perfectly accurate connection made by a comedian making fun of a political candidate. No one, in short, thinks (falsely) that Trump himself is connected to the filing. He is just (truly) connected to Oliver’s joke.

Second, Section 2(c) of the Trademark Act prevents registration of “a name . . . identifying a particular living individual except by his written consent.” Assuming that Trump did not and will not consent, the question in this case becomes whether it identifies him. Again, before the show aired, almost unequivocally, no. But Oliver’s goal is to use it as a form of identification for Trump. So, do we credit that goal and count it as a form of identification, or do we look at whether Trump himself uses it self-referentially? The Trademark Office examination manual explains, “Section 2(c) applies not only to full names, but also . . . nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed.” Is, then, this “nickname” publicly connected to Trump, or is he so well known that it would be assumed? We’ll have to see how the USPTO responds, but again I would argue no, it is publicly connected to a comedian’s ironic depiction of Trump, not to the particular living individual himself. And while Trump might be famous, the name DRUMPF is essentially a parody and few would assume that he identifies with it.

Third, Section 2(e)(4) of the Trademark Act bars registration of any mark which “is primarily merely a surname” (i.e., a last name). These objections are notoriously hard to overcome and generally at the discretion of an examiner. Is DRUMPF likely to be perceived as a last name by the “purchasing public” (which, in this case, would be users of the claimed website)? Unfortunately for Oliver, the answer here might be, yes. The difference between this analysis and the above is that we now don’t care whether it is associated with Trump, but just whether it is thought of as a last name in general. And, again thanks to Oliver’s own popularity and messaging, anyone who cares enough to visit the DRUMPF site would almost by necessity perceive DRUMPF to be a last name. (Incidentally, one could write an entire law review article on the separate, interesting issues relating to the URL and cybersquatting , but that will have to wait for another time).

Finally, under Section 1(b) of the Trademark Act, any applicant swears under oath that they have a good faith “bona fide intention” to use the applied-for mark in commerce in connection with the services listed in the application. Here, that is provision of a multimedia website. While usually not an issue at the outset with intent-to-use applications, Oliver (or, really Drumpf Industries) would eventually have to show bona fide use of the mark as claimed through a screen-shot or the like. The problem right now is that the site is hardly “multimedia”—it is a static page where you can buy a hat or link to a Google Chrome extension that converts the name Trump into Drumpf. Oliver could certainly (if he really cared enough) place some multimedia content on the site before filing his screen-shot, but technically he would need to have had the intent to do so at the time of filing the application. So, to truly avoid this sort of challenge, he will need to demonstrate through some evidence that as of a few weeks ago, Drumpf Industries (whatever that is) intended to build a true multimedia site.

So, will Oliver’s (I mean, Drumpf Industries’) mark ultimately make it through examination? It seems the Trademark Office (which will certainly be following this one closely) could make life pretty hard on the application if it wanted to. But, of course, would anyone even care at that point?

Peter J. Karol

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