Your Personal Name and Branding Advice
Monday, May 8th, 2017 @ 12:04PM
If you’ve read any of our prior blogs, you know that at the Lomnitzer Law Firm, we’re big proponents of protecting intellectual property rights.
One question we get asked a lot is, what if your intellectual property is your personal name – that is, if your business name is your given name? Is it protectable as a trademark?
Like so many other things in law, it depends.
A Trademarks Primer:
Here’s a quick primer on how trademarks work. They’re attached to a particular type of goods or services. And when you register a trademark (or service mark, for services – here, we’ll just say “mark” to refer to either one), you’re registering it for goods or services for which you’re already using the mark in commerce, or intend to soon.
The idea is to prevent a monopoly on the use of a mark across categories in which the mark’s owner does not intend to do business.
For instance, take the word “Apple.” Apple is a registered mark which refers to computers, software, computer peripherals, and other similar products. If you were to introduce a new technology called Apple and tried to register a trademark for it, you might have some difficulty. The U.S. Patent and Trademark Office (“USPTO”) would probably say that what you’re offering is too similar to the other Apple. Not to mention that Apple itself (the California company) would also likely oppose any attempt to register the trademark.
But suppose you were opening a chain of fitness centers under the name Apple. You may be able to register that mark because it’s in a completely different category of goods and services that one may not necessarily expect Apple (the California company) to expand into.
Yet you wouldn’t be able to register the name Apple to describe the fruit of the same name. Why? Because it’s too descriptive of that object. To preclude everyone in the world from referring to an apple as such would be unfair and impractical.
Basically, the more creative a trademark is – in either the wording itself or in the way it’s being used – the likelier a trademark will be granted. The less creative the mark – whether the word is merely descriptive or generic for the item or service it identifies – the more difficult it will be to register the trademark.
When the USPTO is in the process of approving a mark, it publishes the mark in gazette to give people the opportunity to oppose the registration. If no one opposes it, it’s generally smooth sailing. But if someone opposes the mark, the approval process becomes a bit more complicated.
Personal Names in Action as Brands:
With all that in mind, consider these recent happenings in the trademark world relating to personal names.
Entertainers Beyonce and Jay Z (the “Carters”) applied last year to trademark their daughter’s name, Blue Ivy Carter, across a broad range of goods and services – 14 categories, to be exact. They range from entertainment services to skincare products to baby teething rings.
But the Carters may face opposition from a woman who registered the name Blue Ivy (without “Carter” at the end) in 2012 for party planning and event management services. When the Blue Ivy Carter mark was published for opposition last month, the Blue Ivy owner filed for an extension of time to oppose it, signaling that she intends to do so.
Assuming she does, both sides have a valid point in their arguments. The Carters have an interest in protecting their young daughter’s name from being misappropriated. At the same time, the Blue Ivy mark owner has several arguments in her favor. She could argue that some of the categories the Blue Ivy Carter mark would cover are too similar to hers, causing confusion. She might also argue that Blue Ivy Carter is not currently being used in commerce in all the categories under which the Carters applied. And finally, she would likely want to argue that Blue Ivy Carter is too descriptive, because it’s the name of the individual who would be providing the goods or services.
We’ll be watching this to see what happens after the Blue Ivy owner files her opposition.
President Donald Trump has spent years fighting for the rights to his name for construction services in China and was finally handed a victory. Under China’s “first come first served” trademark registration policy, someone else received the rights to use the name because he had applied before Mr. Trump did in 2006. However, the original mark was invalidated late last year, while Mr. Trump’s application was allowed to proceed and is expected to be approved quickly. (This has led to speculation that China is attempting to win over the President, and that Mr. Trump’s acceptance of the registration of the marks might violate a provision of the U.S. Constitution. But that goes beyond the scope of this blog.)
A recent case in the UK involving designer Karen Millen and the company Karen Millen Fashions Limited is reminiscent of one in the US several years ago which involved fashion designer Joseph Abboud. Abboud had sold his trademarks to JA Apparel Corp. and then began a new fashion line called Jaz with the tagline “a new composition by designer Joseph Abboud.” Abboud was sued by JA Apparel for using his own name in this manner, but the court ruled in his favor, and he is allowed to use his name subject to certain limitations.
So it seems that you can trademark a personal name, at least in certain circumstances. Here are a few guidelines:
The name needs to identify and distinguish the services or goods specified in the trademark registration, and not merely the individual. There needs to be a connection in the mind of the consumer. For example, for George Foreman to register his personal name for barbecue grills, there needs to be demonstrable evidence that when people hear his name, they think of grills.
The name needs to be used in commerce, either directly in connection with rendering goods and services, or in the advertisements for those goods and services.
Finally, a certain level of fame or celebrity helps – though there is no bright-line rule for how well-known you have to be.
Are you thinking about trying to trademark your personal name, or anything else? Our firm is located in Boca Raton, and focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953-9300 or visit us online at http://www.lomnitzerlaw.com for your free consultation.
Please note: this blog is intended to provide general information which should not be taken as legal advice.