Can You Trademark Your Own Name? : Verna Law, P.C.

Can You Trademark Your Own Name?

In today’s world, where personal branding is more important than ever, many individuals wonder whether they can trademark their own name. Whether you’re a business owner, entrepreneur, or public figure, securing trademark protection for your name can provide valuable legal rights and help prevent unauthorized use. But the process isn’t always straightforward. Let’s explore the key considerations, challenges, and benefits of trademarking your own name.

If you have any questions about trademarking your name or need assistance navigating the trademark application process, Verna Law, P.C. is here to help. Contact us at anthony@vernalaw.com or call 914-908-6757. Our experienced attorneys can guide you through every step, ensuring your name and brand receive the protection they deserve.

Understanding Name Trademarks

What Is a Name Trademark?

A name trademark is a legal protection that grants you exclusive rights to use your name in connection with specific goods or services. This can apply to your full name, first name, last name, or even a stage name. Trademarking your name helps protect your brand identity and prevents others from using a similar name that could cause confusion in the marketplace.

Why Trademark Your Name?

There are many reasons why someone might want to trademark their name. For public figures and celebrities, a trademarked name can be a valuable asset, safeguarding against unauthorized use and maintaining control over their personal brand. For business owners, trademarking a company name or founder’s name ensures that competitors can’t exploit the goodwill associated with your brand.

For example, consider Michael Jordan, whose name is not just a personal identifier but a powerful brand in itself. By securing trademark protection, Jordan has exclusive rights to use his name in connection with various products, from apparel to sports gear, creating a significant business empire around his personal brand.

Legal Requirements and the Trademark Application Process

Eligibility Criteria

To trademark your name, it must meet certain legal requirements. Primarily, the name needs to be distinctive rather than merely descriptive. If your name is common, like John Smith, you may need to prove that the name has acquired a secondary meaning, meaning it has become uniquely associated with your goods or services in the eyes of the public.

The Application Process

Trademarking your name involves navigating the trademark application process with the United States Patent and Trademark Office (USPTO). Here’s how the process generally works:

Conduct a Trademark Search: Before filing, it’s crucial to perform a trademark search using the USPTO database to ensure that your name isn’t already in use or too similar to existing trademarks. This step helps avoid potential legal trouble down the line.
File the Application Form: Once you’ve confirmed that your name is available, you can file a trademark application. This form requires you to specify the class of goods or services under which your name will be trademarked, such as clothing, entertainment, or consulting services.
Pay Filing Fees: Along with the application, you’ll need to pay the necessary filing fees. These fees can vary depending on the number of classes you’re registering under.
Examination by the Trademark Office: After submission, your application will be reviewed by an examining attorney at the trademark office. They will evaluate your application to ensure it meets all legal requirements and doesn’t conflict with existing trademarks.
Responding to Office Actions: If the examining attorney raises any issues, you may receive an office action, which you’ll need to address. This could involve providing additional information, amending your application, or arguing against the attorney’s concerns.
Publication in the Official Gazette: If your application passes examination, it will be published in the USPTO’s Official Gazette, allowing others a chance to oppose your trademark if they believe it conflicts with their own rights.
Registration: If no opposition is filed, or if any oppositions are resolved in your favor, your name will be registered as a trademark, granting you exclusive rights to its use in the specified categories.

Challenges and Considerations

Common Issues

Trademarking a name isn’t without its challenges. Similar names or existing trademarks might cause a likelihood of confusion, leading to complications in the registration process. For example, if your name is too similar to an already registered trademark, the USPTO may refuse your application.

Additionally, it’s important to consider the geographic area where your trademark will be protected. Federal trademark registration provides nationwide protection, while state-level registration offers more limited coverage.

Primarily a Surname Trademark Issue

Under U.S. trademark law, a mark that is “primarily merely a surname” is generally not eligible for federal registration. This principle stems from Section 2(e)(4) of the Lanham Act, which prohibits the registration of marks that consist primarily of a surname unless they have acquired distinctiveness or secondary meaning.

Why the Restriction?

The restriction is rooted in the idea that surnames, being common identifiers for individuals, do not inherently distinguish the source of goods or services. The law aims to prevent any one person or entity from monopolizing a common surname for commercial use, ensuring that surnames remain available for others to use.

Exceptions and Requirements

To overcome this bar, an applicant must demonstrate that the surname has acquired distinctiveness through extensive use in commerce. This is known as proving “secondary meaning,” where the surname has become associated with a specific source or brand in the minds of consumers. This evidence can include long-term use, substantial sales, advertising, and consumer recognition.

Case Examples

The U.S. Patent and Trademark Office (USPTO) evaluates surname-based marks on a case-by-case basis. For instance, in In re Hutchinson Technology, Inc., the Board held that “HUTCHINSON” was primarily a surname but found the mark had acquired distinctiveness due to the company’s extensive use and recognition.

In summary, while surnames are generally barred from trademark registration under the Lanham Act, applicants can overcome this obstacle by proving that the surname has achieved secondary meaning and is recognized as a distinctive brand identifier.

Trademark Issues with the Name of a Living Individual

Registering a trademark that consists of or incorporates the name of a living individual presents unique challenges under U.S. trademark law. The primary concern involves protecting the individual’s privacy and preventing the unauthorized commercial use of their name, which could imply an endorsement or affiliation.

Consent Requirement

One of the key issues is the need for consent. According to Section 2(c) of the Lanham Act, a trademark that includes a living person’s name must have the written consent of that individual. This requirement ensures that individuals are not falsely associated with products or services without their permission. Failure to obtain consent can lead to the refusal of the trademark application or cancellation of an already registered mark.

Right of Publicity

The name of a living individual is protected by the right of publicity, which prevents unauthorized commercial exploitation of one’s name, likeness, or other personal attributes. This right ensures that individuals can control how their identity is used in commerce. Therefore, using a living person’s name as a trademark without permission could lead to legal disputes over the right of publicity, in addition to trademark issues.

Likelihood of Confusion

Even with consent, the use of a living individual’s name as a trademark must not create confusion about the association between the individual and the goods or services. For instance, if the name is associated with a well-known personality, there might be a risk that consumers could mistakenly believe the individual endorses the product or service, leading to potential trademark disputes or claims of false endorsement.

Case Law Examples

Cases such as In re Michael J. Fox Foundation for Parkinson’s Research illustrate how the USPTO evaluates applications involving living individuals’ names. The focus is on whether the name is sufficiently distinctive and whether consent is appropriately documented.

In summary, using a living individual’s name as a trademark involves stringent requirements to ensure privacy, consent, and avoid misleading consumers. Compliance with these requirements is essential to navigate the complexities of trademark registration and protection.

Selling Your Name to a Business

Another challenge arises when a founder sells their name to a business. This situation can lead to complex legal issues, as seen in the cases of Christian Lacroix and Ermenegildo Zegna. Both designers faced trademark disputes after leaving the companies that bore their names. When you sell the rights to your name, you may lose control over its future use, which can impact your ability to start new ventures or protect your personal brand.

Famous Names and Public Figures

For public figures and celebrities, trademarking a name is especially crucial. The right of publicity protects against unauthorized commercial use of a well-known name or likeness. However, trademarking a famous name can be complicated, as it may already hold significant recognition in the public domain, requiring careful navigation of U.S. trademark law.

Legal Protection and Enforcement

Maintaining Your Trademark

Once your name is trademarked, it’s vital to maintain the registration by filing required documents and using the name in commerce. For example, in the sixth year of registration, you’ll need to file a declaration of continued use to keep your trademark active. Failure to maintain your trademark could result in its cancellation, leaving your name unprotected.

Avoiding Legal Trouble

Trademark owners have the right to take legal action in federal court to stop unauthorized use of their name. Regularly monitor the marketplace for potential trademark infringement, and be prepared to enforce your rights to protect your brand. Additionally, be cautious when using common words as part of your trademark, as this could lead to legal disputes over the scope of your trademark rights.

Additional Considerations for Businesses

Name Trademarks for Business Entities

Business owners and limited liability companies often trademark their company names to protect their brand identity. Ensure that your trademarked name aligns with your domain name and overall business strategy. This alignment is crucial for establishing a strong, consistent brand presence in the market.

Foreign Registrations and International Protection

If your business operates internationally, consider securing foreign registrations to protect your name in other countries. This step can prevent others from exploiting your brand abroad, ensuring your name remains a valuable asset globally.

Conclusion

Trademarking your name is an important step in building and protecting your personal or business brand. Whether you’re safeguarding your own identity or a business name, the process requires careful planning and an understanding of the legal landscape. By securing a name trademark, you gain exclusive rights and legal protection, helping you maintain control over how your name is used in the marketplace.

For further reading and guidance, check out our previous blog posts on the importance of trademark searches and what makes a trademark fanciful:

Can You Trademark Your Own Name?