Donald Trump isn’t the only one filing trademarks in the hopes of capturing this election cycle’s headlines. Comedian and “Last Week Tonight” host John Oliver recently amassed a great deal of news coverage and social media shares with his satirically scathing twenty-one-minute segment on Trump’s presidential bid. Oliver concluded the segment by reviving Trump’s apparent ancestral name, Drumpf, and mobilizing his young, Internet-savvy following to spread the ‘truth’ on Trump. Oliver pulled out all the stops, co-opting Trump’s campaign slogan to popularize the hashtag #makedonalddrumpfagain, selling Drumpf merchandise, and creating a Chrome web browser extension to replace all instances of “Trump” on users’ web pages with “Drumpf.” Most importantly for our purposes, however, Oliver has submitted a trademark application to the USPTO for “DRUMPF.”
Gaining Protection for “DRUMPF”
How far can Oliver take this? To gain registration and protection in the USPTO, a trademark must be 1) distinctive and 2) used in commerce. Moreover, the trademark cannot cause confusion for consumers in the marketplace.
Let’s begin with the distinctiveness requirement. Surnames can gain registration only if they have acquired a meaning beyond its name function. A word that is “primarily a surname” cannot gain protection because it is not distinctive. Examples include Jones, Smith, Adams, or Miller. These are words that anyone would recognize as a person’s name, and the trademark law does not permit their registration because doing so would unduly inhibit others with the same last name from using them in commerce. The Trademark Trial and Appeal Board (TTAB) has enlisted four factors to assist examiners in determining whether surname marks are sufficiently distinctive to gain protection: 1) whether the surname is common or rare; 2) whether the mark at issue is the surname of anyone connected with the applicant; 3) whether the mark has a recognized meaning other than as a surname; and 4) whether the mark has the ‘look and feel’ of a surname. The TTAB’s In re Isabella Fiore, LLC opinion, for example, applied the factors to find that “FIORE” is not primarily a surname.
Considered in this light, DRUMPF likely would not be taken as primarily a surname, because it is both uncommon and unused by another personality with such a last name. In other words, it is rare and not associated with anyone else in the public’s view. DRUMPF does not have a recognized meaning other than as a surname. The biggest question for the distinctiveness element, therefore, is whether it has the ‘look and feel of a surname.’ If it does have the look and feel of a surname, it will be more difficult for Oliver to gain registration.
Assuming DRUMPF passes the distinctiveness requirement, Oliver will have to show that the mark is used in commerce, or alternatively, that he intends to use it in commerce. This requirement is likely Oliver’s primary purpose for selling the “Make Donald Drumpf Again” hats—it ensures that the mark is used in commerce. Oliver has even incorporated Drumpf Industries, LLC in Delaware to bolster his claim to use in commerce.
Finally, DRUMPF cannot cause consumer confusion. Since DRUMPF of course plays off the verbal similarity of TRUMP, Oliver’s biggest concern would be that consumers would be confused between the two names. Perhaps this is why Oliver compared TRUMP to the “sound produced when a mouthy servant is slapped across the face with a wad of thousand dollar bills,” while remarking that DRUMPF is “the sound produced when a morbidly obese pigeon flies into the window of a foreclosed Old Navy.” While obviously an attempt to make the audience laugh, Oliver’s line subtly serves the immensely important function of differentiating the two words in the public’s mind. Were Trump to seek and injunction on grounds of confusion, the court would apply the traditional “Polaroid factors” which include strength of the TRUMP mark, similarity of the two marks, actual confusion as demonstrated by survey evidence, and Oliver’s good or bad faith. It is difficult to predict which way a confusion claim could go, considering that TRUMP and DRUMPF are somewhat, but not entirely, similar. As highlighted in the next section, Trump’s stronger claim would lie in trademark dilution.
Equally interesting to Oliver’s trademark application will be Trump’s response (or non-response). Trump has made headlines by countering critics unabashedly. In Oliver’s case, the GOP candidate previously has dismissed the comedian and “Last Week Tonight,” but has yet to respond directly to Oliver’s most recent critique of the Trump campaign. Ironically, as some have noted, Trump may leave this squabble the victor. Old wisdom suggests that bad publicity is still publicity, and the Trump name grows more deeply ingrained in the public’s consciousness with each headline.
Should Trump seek legal recourse, his best strategy would be a dilution claim. Dilution comes in two forms: blurring and tarnishment. Trump would pursue a blurring claim, arguing that DRUMPF weakens the association between the TRUMP brand and its products. Yet from a public perception standpoint, it might not be in Trump’s interest to attack a show he has previously called “very boring and low rated.” Considering that he has continued to win primaries since the Oliver segment, Trump could simply watch #makedonalddrumpfagain dissipate into a harmless story of the past.
Touching Broader Trademark Themes
Regardless of the ultimate result, the trademark law finds itself at the core of this story. One could find some irony in the situation. Many IP scholars have expressed concern with the trademark law’s ability to restrict free speech by monopolizing particular words. Yet here, Oliver is turning this critique on its head, using the trademark law as a means for cementing his claim to the DRUMPF mark and using the mark as a sort of political activism to rally the public behind his cause. In other words, rather than restricting speech, Oliver is promoting political discourse by parading the DRUMPF mark. Yes, the mark functions as a branding tool to sell hats (and indeed must, to gain protected status), but Oliver’s purpose seems much more about politics than commerce.
It is a unique, striking use of the trademark system. Whether it is a desirable or undesirable use is for the reader to decide.
Tom Merante is a J.D. candidate, 2017, at NYU School of Law.