The PTO is not your personal bodyguard!

When you’ve filed an intent-to-use trademark application, it’s generally unwise to make a public statement to the effect that despite having filed the application, you in fact have no such intent whatsoever. But that’s exactly what America’s most recently humiliated politician’s wife, Jenny Sanford, has done.  Politico reported yesterday that Ms. Sanford, in a clearly misguided effort to “protect [her] family’s privacy,” filed an application with the PTO for JENNY SANFORD, for “Product merchandising to be sold at on-line retail store featuring clothing, mugs and other household items; stickers, decals, notepads.”  But when questioned by Politico about the application, Ms. Sanford replied that “there was never an intention to profit off this trademark or sell merchandise.”

SAY WHAT?  Sounds like a voidable application to me.  (Check out John Welch’s warnings about bona fide intent as a possible ground for opposition.)

Jenny, let’s talk.  (I’ve got your number).  Look, your husband may be a philandering hypocritical nincompoop, but that does not give you license to waste PTO resources.  Here is the deal: filing an application with the PTO is not the way you prevent the “inappropriate use” of your name and “product placement going forward” if you have no bona fide intent to use your name as a trademark.  Having a trademark application on file when you have publicly admitted to your lack of such intent, although nowhere as titillating as saying you’re hiking the Appalachian Trail when in reality you’re shacking up with your Argentine mistress with flights paid by taxpayers, is still an abuse of public resources.

I’m sure that in reality Ms. Sanford filed the application at the suggestion of well-meaning but clueless supporters who probably said something like “you should copyright your name to protect it,” perhaps to prevent against her name appearing in a domain name, but Glenn Beck just found out the hard way that that tactic fails in the face of the First Amendment.  So please, it must have been a very troubling period for you, with everyone around you trying to give advice, but really, amid all the turmoil, I think this was pretty low on the priority list.  Now that you’ve admitted to having no intent to use the mark as required to support a registration, the wisest course would simply be to let the application become abandoned.  Just my .02.

An interesting side issue for trademark geeks is that this application provides yet another example of PTO inconsistency in prosecution.  Where the mark at issue consists of what appears to be a person’s name, and that name doesn’t match the name of the applicant, the examining attorney is supposed to inquire whether the applicant is the person identified by the mark.  (TMEP 1206.04(b) – Names Must Match. Consent may be presumed only where the name in the mark matches the name of the signatory. If the names do not match, the examining attorney must issue an inquiry. For example, if the name in the mark is J.C. Jones, and the application is signed by John Jones, the examining attorney must inquire whether J.C. Jones is John Jones. If applicant states that J.C. Jones is John Jones, consent is presumed. The statement that J.C. Jones is John Jones may be entered by examiner’s amendment, if appropriate.)  Here, the applicant is Jennifer Sullivan Sanford, but the examiner issued no such inquiry.  She was probably too excited to have found this newsworthy application on her plate.