Not everyone uses an arbitrary or fanciful brand name. Often times individuals or companies will just go with someone’s name (present company included). Read on for a list of considerations when using a personal name as a trademark.
Trademark rules apply.
Hey, John Doe. Do you want to register JOHN DOE with the Trademark Office? First, it’s best to have a trademark search performed. If there are other JOHN DOE (or similar) marks used in connection with similar products, you could run into a USPTO rejection. (Or, probably worse, a third-party objection or cease-and-desist letter.)
Don’t forget about descriptiveness.
Thinking about using a personal name as a trademark? Remember, a descriptive trademark describes a characteristic or element of the goods you offer under your brand name. You can see how this might be an issue if you’re offering products or, even more so, services, under your personal name. It can be difficult to distinguish between an individual and his or her services.
Use it as a brand — especially when it comes to services.
Personal names can function as trademarks so long as they can distinguish the products or services from the person. Example? The mark LEE TREVINO was held by the USPTO as merely identifying a famous golfer, rather than functioning to distinguish any services performed by him. This issue often comes up with musical artists, groups, or actors in trying to distinguish the individual from the service, which can be hard to do. Products are more easily distinguished from an individual. (Think: Martha Stewart’s product line at Macy’s.)
Fame can help.
Remember secondary meaning, that instant customer recognition factor that boosts protection in descriptive marks? It may be easier to prove if the person attempting to prove trademark rights in his name is using the name in connection with products or services related to the reason for his fame. Example? THE ESSENCE OF EMERIL (Serial No. 77215761) registered in connection with “cooking demonstrations.” (That mark reflects the personal name of celebrity chef Emeril Lagasse.)
The Point: There are a few special things to think about when using a personal name as a trademark, but remember that ordinary trademark rules (regarding searching, descriptiveness, and secondary meaning) apply.
What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.
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