What’s in a name? Well, a name can suggest a lot about an individual, including their ancestry and heritage. We identify ourselves by, and answer to, our given names. It’s often the first piece of information exchanged between individuals who don’t know each other. Arguably, nothing serves as a stronger identifier of an individual than their given name. But does this make personal names appropriate for trademark protection?
When selecting a mark to identify your particular goods or services, you need something that is capable of distinguishing your goods and services from those of others. It may seem intuitive that a person’s name serves that purpose perfectly. In fact, celebrities including Beyoncé, Michael Jordan, Arnold Schwarzenegger, Rush Limbaugh, Elvis, Sarah Palin, Taylor Swift, Frank Sinatra, and David Beckham, to name a few, have successfully registered their names as trademarks for a variety of goods and services. However, there are hurdles to effectively protecting one’s name as a trademark.
Common law trademark rights arise through adoption and use of a mark in commerce. To be protected as a trademark, a personal name must be used as a trademark—the name must be used as a source identifier, to distinguish the goods or services of a particular source. A common misperception regarding celebrity trademarks is that the names are registered solely to prevent others from using the names as marks. However, to serve as a trademark or achieve federal registration, the name, even a well-known celebrity name, must be used in connection with goods or services. Not surprisingly, many of the registrations for the celebrity names above include “entertainment” in the recitation of services. Perhaps more surprisingly, one of David Beckham’s registrations covers everything from mobile telephones to tankinis, and one of Taylor Swift’s registrations covers kitchen and table linens.
In addition to use as a trademark, a showing of secondary meaning is required to protect a name as a mark. This means that a personal name can be protected as a trademark only if the owner can prove that, through use, the name has acquired distinctiveness or made an impact on the buying public. Under common law, the secondary meaning requirement applies to last names alone, first names alone, and the combination of both. In contrast, the Lanham Act requires secondary meaning as a condition of registration only for marks that are “primarily merely a surname,” or only last names. To achieve federal registration of a personal name, the focus is on the main significance of the term, and whether the public will perceive the designation as a personal name. If the public views the mark as a personal name, then proof of secondary meaning is required.
Part of the rationale for requiring secondary meaning is a reluctance to prevent a person from using his or her own name within a business name or trademark, due to a grant of exclusive rights in that name to another.Interestingly, as trademark law has evolved, so has the view that everyone has a “right” to use their own name as a mark. The modern view focuses on protecting the public from confusion, such that a subsequent user may face limits to using their own name if it would be likely to cause confusion with an existing mark. As one District Judge stated, “[A] person has no right to use his name as a trademark simply because of the fortuity of his parents and their choice of names. The world is full of people who cannot use their names in whole industries: Marriotts in motels, Hugheses in oil tools, and McDonalds in fast foods.”
While establishing secondary meaning can be an obstacle, a personal name can become a strong mark, such that the public recognizes the name as identifying certain goods and services from one source. For example, the marks Ralph Lauren, Ford, and McDonald’s are all personal names that serve as strong and effective trademarks. When deciding whether to use your personal name as a trademark, walking through the five factor test courts use to decide if a name is “primarily merely a surname” can be helpful. The five factors are:
- The rarity of the name (the more uncommon a name is, the less likely it is to be viewed as “primarily merely” a name);
- Whether the name is the name of the applicant (if the mark is actually your name it may increase the likelihood that it is viewed as a name);
- Whether there is a significant non-surname meaning (for example, last names like BIRD and LANE);
- Whether the mark looks and sounds like a surname (sometimes even rare names are obviously names); and
- Whether the mark is presented in a stylized format (sometimes stylization can be distinctive enough to create a separate commercial impression).
Unless your name hits on the right side of each of these five factors, you’re likely looking at an uphill battle for protecting your name as a new trademark. Thus, unless you are wed to using a personal name in a trademark fashion, exploring more creative options for a mark may be a better path to the trademark protection you desire!