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.
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.
As I wrote at the time of the Circuit Court’s decision, this “will be an issue to watch moving forward.” Vidal presents the question of whether the refusal to register a mark under 15 U.S.C. §1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a living government official or public figure. Since history is made every day, this is an example of our issue concerning historic figures coming into present relief. Somewhat surprisingly, the briefing to date has been fairly limited, amounting to the cert. petition, one amicus filing, the opposition to certiorari, and a reply, each one a short document by Court standards. (None exceeding 27 pages, and recent IP cases such as Jack Daniel’s Properties, Inc., v. VIP Products LLC, Docket No. 22-148, saw over 30 amicus briefs filed, as I discussed in an earlier piece). But one can expect, now that cert. has been granted, that additional amicus filings will follow. So watch the docket to see how this case plays out, and to see how it impacts the concept of the registration of historic figure trademarks.
Additionally, issues can arise when one claims trademark rights connected to historic landmarks, as Justin Hughes discussed at length in the Wake Forest Law Review. His piece discussed various disputes, including the contest between the restauranteur who had operated his named establishment for forty years and his former landlord over use of the name “Fraunces Tavern” anywhere but at the actual site “where George Washington bade a teary farewell to the officers of the Continental Army.” Id. (at 1165-66). His examples well illustrate some of the issues surrounding trademark law’s application in such matters. Indeed, keeping famous names historically associated with famous sites rather than the specific businesses that had once operated at those sites has statutory support in the United States. See 54 U.S.C. § 302106 (“Notwithstanding section 1125(c) of title 15, buildings and structures on or eligible for inclusion on the National Register of Historic Places (either individually or as part of a historic district), or designated as an individual landmark or as a contributing building in a historic district by a unit of State or local government, may retain the name historically associated with the building or structure.”) As Hughes notes (at 1188 and following), this may be a specific concept applicable to historic landmarks, or nothing more than the application of the foundational concept that one cannot obtain trademark registration for terms that are merely geographically descriptive. Id. Or, it may be businesses at such locations may have “non-portable second meaning” for so long as the business remains at the site, as he describes (at 1196 and following).
Beyond Vidal as to living persons, and the recurring issues of historic landmarks, these concepts have contemporary impacts in the United States in connection with historic events as well. For instance, this article published on June 21st, just two days after many US jurisdictions celebrated Juneteenth:
The term Juneteenth has actually been around since 1890 when it replaced what was then known as “Jubilee Day.” But what does Juneteenth signify exactly? In 1863, Abraham Lincoln issued the Emancipation Proclamation abolishing slavery in the rebellious states. Unfortunately, it would take more than two years for enslaved people in Texas to be freed. It wasn’t until June 19, 1865, that African-Americans in Galveston, Texas would receive word from Union troops that they were officially freed. Black citizens in Texas subsequently established June 19, or “Juneteenth” as it has come to be known, as a day to commemorate the end of slavery. Not surprisingly, Texas was the first state to declare Juneteenth a state holiday, and it officially became a Federal holiday on June 17, 2021. As the holiday approached this year, it seemed the term “Juneteenth” was everywhere – in broadcast and local media, in advertisements and on social media. As an IP attorney, I was curious whether anyone owned any trademark rights relating to Juneteenth. More specifically, I was curious to know whether someone would try to capitalize on the name of such an historic and significant holiday.
Last year at this time there were 36 active filings at the USPTO using Juneteenth as all or part of a mark, and six had actually matured to registration, according to Halstead. Now there are thirty-seven live filings, and the number of registrations has more than doubled to thirteen, though most specifically disclaim “’JUNETEENTH’ APART FROM THE MARK AS SHOWN.”
One may have questions about the pros and cons of allowing someone to register a Juneteenth trademark, with some seeing it as a way to protect African American culture, and others saying that “the idea of Juneteenth potato chips, plates, and beverages does not sit right with [them] as the holiday is both celebratory and solemn.” And this is not the first time applicants have sought some level of control over such phrases, as there have even been trademark disputes concerning the term “Black History Month.” But questions or not, there are examples of Juneteenth trademarks that have been registered without incident or protest, such as one for an Indiana non-profit and another for strawberry soda. As one commentator noted as to that strawberry soda:
In 2015, Hecky’s Barbecue filed an application to register JUNETEENTH STRAWBERRY SODA. This mark subsequently registered in 2016 without issue. Why didn’t consumers have a similarly negative reaction to Hecky’s use of JUNETEENTH on consumer products? Some further digging quickly led me to find the answer. It turns out that strawberry soda is a traditional drink served at Juneteenth celebrations. In 1865, newly freed people consumed red food and drinks to symbolize the blood shed by previously enslaved people. As a result, drinking strawberry soda became an act of empowerment and rebellion. Consumers have accepted Hecky’s use of JUNETEENTH because it has a direct correlation to the holiday.
Though the recent recognition of Juneteenth as a holiday has led to a current focus on trademarks and applications related to that holiday, trademarks based on other holidays connected to historic events have been issued in the United States, as noted by Corsearch. In fact, the USPTO grants 17.1% of the applications it receives including the phrase “July 4th” or like, and 24.5% of those including the word “Thanksgiving.” Id.
Other questions can emerge when one tries to own or urge a history that is not truly their own. For example, the United States has criminalized the notion of stolen valor, of fraudulently claiming having received a valor award, military honor, or other like recognition with the intention of obtaining money, property, or other tangible benefits by convincing another that he or she received the award. So, what one can claim from history is not without limits, but the exact location of such borders is not always clear in the United States when it comes to history, historic figures, events, and landmarks.
Now let’s move along to see how the rest of the world addresses these concepts. There are several examples worth examining. In Japan, for instance, one cannot register as a trademark one containing the name, famous pseudonym, professional name, or pen name of another living person. Japanese Trademark Law, Article 4(1)(viii). But Japan has allowed registrations of famous historical figures that are no longer living, including Cleopatra, Kennedy, Mozart, and others, according to Masaki Mikami. In Japan, the decision as to whether or not to allow such a registration is addressed under the country’s Trademark Examination Manual (TEM), section 42.107.04, under a multi-factor test:
1. In the process of examining an application filed for registering a trademark, examiners should pay special attention to the application for a trademark created after the name of a historical person since using or registering such application may cause damage to social and public interest, irrespective the unobjectionable composition of the trademark, or generally-accepted sense of morality, which may fall under Article 4(1)(vii) of the Trademark Act. Specifically, they should analyze such application if it would fall under the provision, comprehensively taking the following backgrounds into consideration:
1) Popularity of the well-known or famous historical person;
2) Acceptance of the name of the historical person among the nation or region;
3) Availability of the name of the historical person;
4) Relationship between the availability of the name of the historical person and the designated goods or services;
5) Circumstance, purpose, or reason of the application; and
6) Relationship between the historical person and the applicant.
2. In the process of the examination said above, especially when examiners recognize the application as “an application for registering the trademark filed by the applicant who takes advantage of the measures for public interest using the name of a historical person, who hinders the execution of the measures, and who intends to monopolize the interest while he/she knows that the application would result in damaging public interest,” the application falls under Article 4(1)(vii) of the Trademark Act based on the idea that the application may disrupt the order of fair competition and cause damage to social and public interest.
[Mikami, Name of a deceased historical person as trademark (2017)]
Mikami notes that the Japanese High Court invalidate the trademark “’Carnegie Special’…because it was presumed that the plaintiff had illegally intended to use the achievement of Dale Carnegie.” Id.
Other countries, such as India (by relying on The Emblems And Names (Prevention Of Improper Use) Act, 1950) make it a bit more straightforward by banning specific names from being trademarked. Thus, one may not use the name or any pictorial representation of Chhatrapati Shivaji Maharaj, Mahatma Gandhi, Pandit Jawahar Lal Nehru, Shrimati Indira Gandhi, Sri Sarada Math, Ashoka Chakra, and Dharma Chakra as part of an Indian trademark. See Schedule to section 3 of The Emblems And Names Act, Clause 9, 16, 19.
There are likewise countries that, in accord with their own national experience, limit trademarks associated with Nazi Germany or the Holocaust, and they would include Germany, others in the European Union, and Israel. In Germany, the use of symbols and trademarks associated with Nazi Germany, including the swastika and other Nazi-related symbols, is strictly regulated. The German Trademark Act, Section 8(2)5, makes one of its “absolute grounds for refusal” any mark “which are contrary to public policy or to accepted principles of morality.” Under Article 7(1)(f), the Community Trade Mark Regulation has a parallel provision, as pointed out by Griffiths in Is There A Right To An Immoral Trademark? In fact, European Union Guidelines for Examination note specifically that “[u]se of the symbols and names of Nazi organizations is prohibited in Germany (§ 86a dt. StGB (German Criminal Code), BGBl. Nr. I 75/1998) and in Austria (§ 1 öst. Abzeichengesetz (Austrian Law on Insignias), BGBl. Nr. 84/1960 in conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. Nr. 25/1947). Any EUTM applied for which uses such symbols or names will be rejected as being against public policy.” Israel too, in Section 11(5) of the Israeli Trademark Ordinance, makes ineligible for registration “[m]arks which are or may be injurious to public policy or morality.” The same is true in the UK, and in the EU more generally as noted above. See UK’s Trade Marks Act 1994, s 3(3)(a), European Trade Mark Regulation, Article 7(1)(f); see also Griffiths, Is There A Right To An Immoral Trademark? Such statutes have led to denial of trademarks for JESUS in the UK. Other countries such as Turkey and Poland have similar laws as well. See Turkish Industrial Property Code, Article 5(h); Polish Industrial Property Law, Article 131 (2). In fact, beyond generally protecting against registration of marks contrary to public order and good morals, Polish law also prohibits registration of marks that “contain elements which are symbols, in particular of a religious, patriotic or cultural nature, the use of which would offend religious, patriotic or national sentiments.” Polish Industrial Property Law, Article 131 (5).
Despite such restrictions, many countries allow trademark registrants to own shares of history by registering trademarks connected to such countries’ own Independence Day celebrations, which clearly connect to historic events. For instance, “China celebrates its Independence Day on October 1 each year and its registry holds the largest volume of valid trademarks with a 37.1% share” of applications referencing that day being granted registration, which is more than double the 17.1% rate of granting for the 4th of July of marks in the US, according to Corsearch. Likewise, the French INPI grants 8.6% of the applications referencing its National Day (also known as Bastille Day) on July 14 of each year. Id. Thus, in these countries, like the United States, registering a mark connected with an historic event is certainly, on a statistical basis, possible though not probable.
Where does this leave us? Since trademarks are a form of property, the central question underlying this piece is, in some sense, the question of “who owns (or should be allowed to own) history?,” a question that some commentators have expressly debated. See “Who Owns History?” Interestingly, one of those debating that question said, “It strikes me this is a very American question: Who owns history?” At least in trademark, as seen above it is an American question, but it is also a question in many other countries as well. That leaves one more point to make, as we harken back to our title. There are fifty-plus US live trademark registrations or pending applications that use in whole or part the phrase “make your mark,” and one of them (US Reg. No. 6058414, owned and used by an intellectual property law firm) reads DON’T JUST MAKE YOUR MARK. OWN IT. Seems like a fitting closing observation to a piece about registering trademarks concerning historic figures, events, and landmarks.