But It’s My Name, Too!

 

The use of a live person’s name for a trademark can be a problem.  In general, the USPTO is circumspect when it comes to allowing one entity to have sole dominion over a person’s name.  They want someone to be able put their own name on their business.  That means you can name your business Erin’s Harpsichords, but so can all of the other Erins selling harpsichords (A huge market, I am sure).  It was the lesson that the owners of Big Mike’s Subs learned and led to the change to Milio’s.  The “name” does not have to be the full name of an individual, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames.  If there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed, you will have a hard time claiming it as your own.  A “name” does not have to be the full name of an individual to be prohibited. This applies to first names, last names, and even nicknames – just so long as the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed.

If the proposed mark looks to be the name of a live person, the USPTO will look for two things.  First, if it is a live human, has that person given permission for his or her name to be used?  Express written permission is required to use a live person’s name (or if it is a US President’s name – dead or alive).  Second, does that name go beyond just being a person’s name and start to function as a trademark?  A mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness.  In other words, if people see and think of it as a person’s name, then it isn’t a trademark.  But if people start to recognize that mark to be more than just a person’s name, they start to think it designating the source of the good or service – as a trademark, then it has gained a secondary meaning.  It has acquired distinctiveness.

The Trademark Trial and Appeal Board has identified five examples of inquiries that may lead to evidence regarding the public’s perception of a term’s primary significance:

  • (1) whether the surname is rare;
  • (2) whether the term is the surname of anyone connected with the applicant;
  • (3) whether the term has any recognized meaning other than as a surname;
  • (4) whether it has the “structure and pronunciation” of a surname; and
  • (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.

These factors are not exclusive, but they give a good indication as to what the USPTO is looking for when determining if a mark is simply a name or a trademark.

So what does this mean?  It can be really easy to name your company after yourself (See OgdenGlazer, LLC), but it may cause you problems in protecting the mark.  If it is a live person, you will certainly need their permission.  If it is a surname, you will need to show that people think of it as more than just a name.  And if it is a dead president, the mark can be registered only with the written consent of the individual, or of the president’s widow during the life of his widow. 15 U.S.C. §1052(c). A whole different set of restrictions, however, is put on the Dead Presidents or The Presidents of the United States of America.

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