From a trademark perspective, nothing serves as a stronger identifier than an individual’s personal name. But does this make personal names (i.e., first names, surnames or a combination of the two) appropriate for trademark registration? Trademark law has always treated personal names differently. In the past, a person was free to use his or her name as a trademark and was not obligated to defend against a claim of trademark infringement by another person with the same name. More recently, however, trademark law has evolved to allow personal names to be protected as trademarks, but only if they have acquired a secondary meaning.
In order to prove that a personal name is a valid trademark, its owner must provide that consumers have come to understand the personal name to identify to a particular businesses product and/or service. For example, a consumer seeing the HURLEY brand for the first time might simply have thought that someone with the surname Hurley was associated with the clothing line – and they would be right (Bob Hurley was one of the founders of this clothing company). Today, HURLEY has gained an extraordinary amount of acquired distinctiveness and is plainly a registerable, protectable trademark. The term’s primary meaning is as a surname, conveying simply that the business is associated with a person, but its secondary meaning is as a trademark, conveying an association with a particular source (or brand) of clothing products. Consumers have come to see the HURLEY name as signifying a business that produces clothing, or surf-wear, rather than a person connected to the business.
When selecting a trademark to identify your particular goods and/or services, you need something that is capable of distinguishing your goods and/or services from those of others. It may seem intuitive that a personal name would serve that purpose perfectly. In fact, celebrities including Kate Spade, Paris Hilton, Beyoncé, Vera Wang, Michael Jordan, Picabo Street, Stein Eriksen, Tiger Woods, Kelly Slater, Cristiano Ronaldo, and Gerry Lopez, to name a few, have successfully registered their names as trademarks for a variety of goods and services. However, there are challenges to effectively protecting one’s personal name as a trademark.
There are four bars to federal trademark registration that may apply to personal names. First, a trademark applicant may not register a mark that is “primarily merely a surname” unless it has acquired distinctiveness, or secondary meaning. Second, when an applied-for-mark comprises the name of a living person, that living person much explicitly consent to registration or the USPTO will issue an office action refusing to register the surname. Third, a trademark applicant may not register a trademark that falsely suggests a connection with a person that is living or dead. Fourth, a trademark applicant may not register a trademark that disparages a person that is living or dead.
To be registered as a trademark, a personal name must be used as a trademark. In other words, the personal name must be used as a source identifier to distinguish the goods and/or services associated with the personal name. To serve as a trademark or achieve federal trademark registration, the personal name, even a well-known celebrity name, must be used in connection with goods and/or services. For a detailed discussion on the 45 different trademark classifications in which a good and/or service is categorized, see our page on Trademark Classes.
As mentioned above, in addition to the use requirement, a showing of secondary meaning is also required to protect a personal name as a trademark. Judge Posner identified three rationales for the rule that requires secondary meaning to create valid trademark rights in a personal name:
- A reluctance to forbid a person from using his or her own name in business;
- Some names are so common that consumers will not assume that two products bearing the same name have the same source and will not be confused (e.g., two “Smith’s Café); and
- Preventing a person from using his name as a trademark could deprive consumers of useful, descriptive information.
There are at least three types of evidence of secondary meaning that may be relied upon when applying for a federal trademark registration:
- Direct or circumstantial evidence tending to prove that the relevant buyer class associated the trademark with the applicant.
- Proof of five years’ use.
- Evidence of ownership of prior registration on the same mark trademark for closely related goods and/or services.
A quick note: Secondary meaning is the same thing as acquired distinctiveness. Some confusion is created by the two labels which mean exactly the same thing and are synonyms. The more descriptive and the less inherently distinctive the trademark, the greater must be the quantity and quality of evidence of secondary meaning to prove that level of distinctiveness necessary to achieve trademark registration.
This means that a personal name can be protected as a trademark only if the owner can prove that, through use, has acquired distinctiveness in the marketplace, or secondary meaning. As noted above, under the Lanham Act, secondary meaning is a requirement of registration only for trademarks that are primarily merely a surname. If consumers view the mark as a personal name, then proof of secondary meaning is required. On the flip side, if consumers would not see the trademark as a personal name, then proof of secondary meaning is not required.
The Trademark Manual of Examining Procedure (TMEP) states that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes the surname significance from that of a surname to that of a trademark for particular goods or services. Note, the applicant does not have the burden of proof in a surname determination. Procedurally, if an application is rejected on this basis of the mark being primarily merely a surname, the USPTO examining attorney must present evidence that the applied-for trademark at issue is primarily merely a surname. If the USPTO examining attorney submits evidence that the applied-for trademark is primarily merely a surname, the burden shifts to the applicant to rebut that evidence. If there is any doubt about whether the mark is primarily merely a surname, the Trademark Trial and Appeal Board (TTAB) will resolve that doubt in favor of the applicant. For more information on acquired distinctiveness or secondary meaning, see our discussion on secondary meaning.
While establishing secondary meaning can often be a challenge, a personal name can become a strong mark, such that consumers recognize the name as identifying certain goods and/or services from a particular brand or source. For example, the marks Harley Davidson, 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, the Trademark Trial and Appeal Board (TTAB) has set forth a five factor test courts use to determine if a name is primarily merely a surname – see TMEP §1211.01 “Primarily Merely a Surname.” The five factors are:
- Whether the surname is rare;
- Whether the term is the surname of anyone connected with the applicant;
- Whether the term has any recognized meaning other than a surname;
- Whether it has the structure and pronunciation of a surname; and
- Whether the stylization of lettering is distinctive enough to create a separate commercial impression.
Unless a trademark applicant’s name satisfies each of these five factors, he or she is likely looking at an uphill battle for registering, protecting his or her name as a new trademark. Therefore, unless a trademark applicant is absolutely set-on using his or her personal name in a trademark fashion, exploring more creative options for a trademark may be a better, less challenging (and less costly) path to achieve trademark registration.
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