Working with several artisan food and alcohol producers as clients, we frequently notice that using one’s own name (first, last, or both) as a brand name in association with one’s goods is very common in these industries. Recently, a decision was handed down by the Trademark Trial and Appeal Board (TTAB) that reminds us that, while using one’s own name in almost every context is a birthright, using it in connection with food and beverage items in the marketplace may land a company in hot water with trademark litigation issues. In sum, you may not be entitled to use your own name!
The recent decision involved a small producer of “pickled gourmet vegetables,” such as cocktail onions and the like, who used the named “McSweet” as the brand name and associated trademark. The genesis of this particular mark was that it was a combination of the creator’s name, Leo McIntyre, with the word “sweet,” which referred to the sweet brine used to pickle the vegetables. Unsurprisingly, McDonald’s Corporation opposed a federal trademark registration for this mark in association with these goods, on the ground that the mark would be likely to cause confusion with McDonald’s family of “Mc” trademarks associated with food, collateral merchandise, and services. The TTAB ultimately held that the McSweet trademark is likely to cause confusion for a variety of reasons.
Putting aside several other issues addressed in that case, the issue of whether a person can use his or her own name to sell goods is particularly germane to the artisan food and beverage industry, as this type of naming convention is more common than in other contexts. We like to think this naming convention is common because our clients take such pride in their products.
Nevertheless, the basic rule is that the law treats trademarks that contain personal names the same as it treats descriptive marks, which require secondary meaning in order to gain the ability to be protected as a trademark. What this means is that merely creating a product and then adding a trademark containing one’s name (or anyone’s name for that matter) is not enough to gain trademark rights. Secondary meaning is the idea that, in addition to merely having the mark and the goods co-exist in the marketplace, consumers must know and understand that the mark refers to a specific producer. It is more than “a guy named Joe makes that cookie”; it is “Joe, a guy I am familiar with because he makes such good cookies, made that cookie.” The classic example for this is “Seattle’s Best Coffee.” Such a mark is more than just a coffee shop that holds itself out as the best coffee in Seattle; it is a specific company that the public is aware of and has come to know by that name. The same reasoning applies to the use of personal names as trademarks.
And we have seen cases like this before, where people with the same name fight over the use of a trademark in relation to related goods. For example, in E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (1992), one Gallo brother had a dispute with the other Gallo brothers over the use of the Gallo mark in relation to cheese, because the other brothers had existing trademark rights relating to the Gallo mark for wine.
So, an iconic example in the food and beverage space might be Charles Shaw wines (famously known as “Two Buck Chuck”). At this point, consumers have come to know Charles Shaw as a name relating to a specific line of wines. However, if another person with the same name were to start making beer or artisan food products under the name “Charles Shaw,” then the owner of the “Charles Shaw” trademark might be able to assert superior trademark rights over him or her.
In conclusion, these are mere examples above, but they illustrate an important point that food and beverage producers should keep in mind. When selecting a brand name, or a name for a new product, if one is considering using a personal name, these nuanced trademark law principles should be considered in order to avoid disputes with other producers.