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Feb. 22 — Democratic presidential nomination contender Bernie Sanders would probably have a very good case if he tried to take control of various uses of the phrase “Feel the Bern.” But there are conflicting considerations that political campaigns face in determining whether to stop unauthorized uses of a candidate's name or identity.
When faced with such unauthorized use, the purposes and time lines of a political campaign can make deciding how to proceed tricky, according to intellectual property law practitioners who spoke with Bloomberg BNA.
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In general, slogans or phrases incorporating the name or identity of a political candidate can potentially have implications either in trademark or right of publicity law.
In this case, the phrase “Feel the Bern” was not originated by the Sanders campaign; instead, it was a product of his supporters. Other parties started selling “Feel the Bern” T-shirts, buttons and other paraphernalia to Sanders' supporters.
Normally, under trademark law, it's the first user of a source identifier in commerce who gets trademark rights. However, Section 2(a) of the Lanham Trademark Act of 1946, 15 U.S.C. §1052(a), bars registration of a trademark that falsely suggests a connection with a living person.
Thus, an application filed with the Patent and Trademark Office on Jan. 31 seeking to register “Feel the Bern Papers” for cigarette rolling papers would likely not succeed (U.S. trademark registration application No. 86/892,414).
This application “will likely be rejected by the Trademark Office,” Emily Campbell of Dunlap Codding P.C., Oklahoma City, told Bloomberg BNA. “If for some reason the Trademark Office does not reject the applications, Sanders would have the opportunity to challenge these applications later on.”
Whether Sanders himself would be able to register a trademark would be another issue. A candidate using his or her own name to run for office might not, on its own, constitute a trademark-type usage. But when a campaign is using a slogan or logo or other type of trademark to raise money for a campaign, there is a connection with a kind of use in commerce.
Not all political slogans can become trademarks, however. In Sanders's case, “Feel the Bern” identifies him by name, Jedediah Wakefield of Fenwick & West LLP, San Francisco, told Bloomberg BNA.
But in other cases, courts have held that a slogan that is purely communicative would not work as a trademark, .
For example, in 2013, the Trademark Trial and Appeal board refused to allow registration of “No More RINOs!” on the basis that consumers would consider the phrase informational and were unlikely to perceive the slogan as a source identifier. In re Hulting, 107 U.S.P.Q.2d 1175 (T.T.A.B. 2013)
In a non-political context, Volvo was unable for similar reasons to register “Drive Safely” as a trademark. In re Volvo Cars of North America Inc., 46 U.S.P.Q.2d 1455 (T.T.A.B. 1998).
“ ‘Feel the Bern' is a play on an expression—I think, from fitness—with a pun on his name, so it's not something that other candidates would feel the need to use to communicate anything about their campaigns,” Wakefield said.
There is even precedent for the idea that an entity can earn trademark rights in a word that someone else came up with first.
For example, “Am Ex” and “Bug” were not first used by American Express or Volkswagen. They were nicknames used by consumers that came to identify the companies' products and services in such a way that they were able to assert trademark rights. American Stock Exchange, Inc. v. American Express Co., 207 U.S.P.Q. 356 (T.T.A.B. 1980); Volkswagenwerk AG v. Rickard, 175 U.S.P.Q. 563 (N.D. Tex. 1972).
But even if Sanders did not want to use “Feel the Bern” as his trademark, he would still have a way to stop other people from using it under right of publicity or personality rights law, which bars commercial misappropriation of a person's image, likeness, name, persona or other identifying characteristics.
There is currently no federal right of publicity law, and not every state protects the right of publicity under common law or statute, so the exact contours of such a right would vary depending on which state's law were to apply.
Whether Sanders would want to try to gain control over “Feel the Bern” might be subject to conflicting considerations.
“As a practical matter, most candidates aren't particularly aggressive about right of publicity claims,” Wakefield said. For one, a lot of uses of a candidate's name or likeness are going to be fair uses, and it might not be efficient to litigate that point.
On the one hand, Wakefield said, Sanders's campaign would not want to alienate supporters or potential supporters, and suing over uses that seem to support a candidate could create a public backlash.
Furthermore, a political campaign has a “limited life,” and it might not be worth a campaign's time or resources to go after unauthorized uses of a candidate's name when there's an end in sight—for good or bad.
“There's only a certain amount of time that a campaign's going to be alive, and the campaign has to decide where it's going to put its energy and resources,” Wakefield said.
On the other hand, Campbell noted that letting it go could have negative consequences.
For one thing, he might want to “control the consistency of his message.”
“You don't know what folks are going to be putting out there in the marketplace with the slogan ‘Feel the Bern'. ” Campbell said. “He might not agree with that message.”
Another consideration might be that money being spent on goods with the candidate's name might be money that the campaign itself might want.
And then there might be future campaigns. Sanders might want to keep “Feel the Bern” in reserve for the next time he competes for office, Campbell said.
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