At the intersection of branding, marketing, and commerce is trademark law.
These are generally corporate concepts – and so, understandably, most people think of trademarks as something that applies to companies.
But what happens when an individual is the company or brand? Can a personal name be trademarked?
Yes, with limitations.
If you want to secure a trademark for your name, you need to be using it in commerce, either directly in connection with providing goods and services, or in the advertisements for them. At the very least, you need to be actively planning to use it and can demonstrate that intent.
In other words, you can’t simply apply for a blanket trademark that prevents others from using your name across the board.
For example, George Foreman has a number of trademarks. One of them is for meat and poultry. If someone comes along and starts selling beef jerky under George Foreman’s name, that might be deemed infringement. But suppose George Foreman sues someone for selling school supplies under his name. Now he has a weaker case, because he doesn’t have a registration that covers those types of products.
Further, consumers wouldn’t necessarily assume that the school supplies were affiliated with George Foreman, the boxer and grillmaster. To the contrary – school supplies might seem like a strange product line for him to get into, given the other types of products he sells.
So to register your name, you need to do it for specific goods or services affiliated with you personally. And there needs to be a connection in the mind of the consumer between you and your product(s).
Basically, for George Foreman to trademark his personal name for barbecue grills, there needs to be demonstrable evidence that when people hear his name, they think of grills.
If you think being a celebrity might help with all of this, you’re right. Fame makes it easier to build the case that people associate you specifically with your product or service. Of course, there is no absolute rule for how well-known you have to be.
So how do these principles play out in real life? It would be reasonable to think these cases generally go the celebrity’s way, to give them maximum control over their own brand. Yet a few recent examples show that’s not how it always goes.
DR. DRE VS. DR. DRAI
In late 2015, ob/gyn Draion Burch, also known as Dr. Drai, filed his application to trademark that nickname. Dr. Drai has appeared on television and written books. He sought to trademark his name for his books, plus videos, podcasts, speaking services, and more.
Enter Andre Young—better known worldwide as Dr. Dre. When the rap producer/businessman got wind of Drai’s trademark application, he filed a complaint with the Trademark Trial and Appeal Board (“TTAB”) to block the registration.
His rationale was that the names, which sound identical, would lead to consumers being confused about the source of the services. He argued that the types of goods and services Dr. Drai intended to sell were associated with the entertainment industry in which Dre himself is a well-known figure. He also alleged that the doctor was trading on the goodwill of Dre’s name.
Dr. Drai claimed that consumer confusion is unlikely, given that he’s a medical doctor and Dre is a “doctor” in name only. Moreover, the reason he chose the name was that it’s his given name.
Finally, Dr. Drai argued that any affiliation with Dre would actually be detrimental to his own brand. As an ob/gyn who is part of the LGBT community, he asserted that wouldn’t want to be associated with some of Dre’s misogynistic and homophobic lyrics.
The TTAB sided with Dr. Drai and dismissed Dre’s complaint. Dr. Drai’s trademark application will continue making its way through the US Patent and Trademark Office (“USPTO”).
STEVE JOBS, FASHION BRAND
A pair of Italian brothers were surprised several years ago to find out that Apple hadn’t trademarked co-founder Steve Jobs’ name. So they did what any enterprising young entrepreneurs would do.
They started a clothing company called “Steve Jobs” and registered their own Steve Jobs trademark.
Needless to say, Apple didn’t appreciate the shout-out to its late leader—especially given that the logo is a “J” with a bite taken out it and a leaf accent. The company sued…
Late in 2017, the EU’s Office for Harmonisation in the Internal Market found that Steve Jobs, the clothing brand, doesn’t infringe on any of Apple’s marks. After all, the letter J isn’t an apple itself, but a letter.
The company reportedly makes bags, jeans, and t-shirts. But the brothers say they intend to expand into other products—including, possibly, electronics. Such a move into Apple’s terrain would likely prompt a fresh trademark complaint. For the moment, however, Steve Jobs is sticking to clothing.
KANYE WEST’S TRADEMARK LAPSE
Kanye West has been known as Yeezy for years. Which is probably why the Chinese firm Fujian Baby Network Technology Co. (“FBNT”) recently decided to try to trademark the term “Yeezy Boost” – the name of a sneaker designed by West.
Apparently West had let some of his trademarks lapse. Noticing an opportunity, FBNT applied last year to register the mark for clothing.
But FBNT had everything going against it. Trademark law isn’t just about first registration. It’s about a reputation you’ve built, and a brand. West has called himself Yeezy since at least 2009, and he designed clothing and shoes under that name for several years before FBNT applied for the mark in the same category. There’s a strong connection in the mind of the public between West and the word “Yeezy.”
FBNT seems to have seen the writing on the wall. Rather than enter into a protracted legal battle that it would be likely to lose, the company abandoned its attempted registration of the mark.
ARE YOU LOOKING TO TRADEMARK YOUR NAME?
Are you thinking about trying to trademark your personal name, or anything else? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us via our website or call to schedule your free consultation.
Please note: this blog is intended to provide general information which should not be taken as legal advice.
Original article posted on our dedicated blog on June 15, 2018 https://lomnitzerlaw.wordpress.com/