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Personal Names As Trademarks

Special legal issues around using personal names as trademarks, and how a trademark lawyer can help resolve this issues.
Written Feb 03, 2011, read 5381 times since then.
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This article discusses special issues related to personal names as trademarks. First of all, what are “personal names” in the trademark context? They consist of first names, surnames or the combination of the two.

Many of the most famous and valuable trademarks (especially among fashion and entertainment-oriented brands) stem from personal names. Yet, as a rule, personal names are considered to lack sufficient distinctiveness to serve as a trademark. As such, they offer little to no protection for brands that consist of them. Under the law, they are characterized similarly to descriptive marks.*

So how do we square this principle with the obvious trademark clout of Prince (Rogers Nelson) or Gucci?

Personal names are only capable of trademark registration if they acquire “secondary meaning”. Secondary meaning is a legal term of art. In some cases, it may be assumed by five years of continuous and exclusive use with specific goods or services. But this “continuous and exclusive” rule of thumb is an imperfect and imprecise one. In reality, broad protection for personal name trademarks comes from a combination of notoriety, advertising and longstanding continuous and exclusive use. These factors combine to transform a personal name in the mind of the public into a brand. Of course, this transformation can be greatly aided by the wise counsel of a good trademark lawyer, who ensures that i’s get their dots and t’s win their crosses at the appropriate times.

If a certain amount of notoriety attaches to a personal name and registrations are handled properly, latecomers with the same or similar names may be prohibited from using their names in a commercial context.

Interestingly, the law wasn’t always like this. At the beginning of the twentieth century, courts tended to favor “absolute rights” of individuals to use their name. But rest assured, Calvin Klein! Modern courts have swung violently to the position that the central issue dictating personal name trademark rights is the right of the consuming public to be free from confusion as to the source of goods and services.

Apart from steamrolling those latecomers, there is one other circumstance where the intersection of personal names and trademarks gets interesting, in my opinion. That is the following issue: what happens when a person (or the entity owning the trademark that incorporates a personal name) sells the rights to a personal name trademark? Can the person at the center of it all finagle his way into using his or her name in a commercial context once again?

Somewhat recently, the designer Joseph Abboud helped us answer this question with longstanding litigation commenced after he sold his famous menswear namesake brand and tried to get back in the business with a brand called JAZ (usually accompanied with “by Joseph Abboud”). At the risk of gross oversimplification, the result (and the whole matter hasn’t completely died even after many years of litigation) of the messy multi-faceted litigation seems to indicate a pretty broad prohibition against this sort of trademark end run attempted by Abboud. The lesson: owners of personal name trademarks should license or sell those rights with extreme caution if they ever want to attach their good name to a commercial project again.

* Please check my other articles out for a parsing of trademark rights by trademark categories if you want further analysis as to why descriptive equates with weak.

Trademark Lawyer, Technology Lawyer 
Seattle, Washington 
Danny Bronski

Trademark lawyer, technology lawyer and lawyer for serious entrepreneurs. Danny Bronski earned his Duke JD and MBA in 2002 and since his focused on building a law practice to help businesses become more profitable by harnessing the power of their intellec

Learn more about the author, Danny Bronski.

Comment on this article

  • Butler to the Stars 
Los Angeles, California 
Rags M.
    Posted by Rags M., Los Angeles, California | Feb 22, 2011

    Thanks for the great article Danny. I have personal experience in what you are discussing.

    My ex-spouse and I decided to pursue various licensing and entertainment deals with various entities in the adult entertainment and mainstream industries. We seized on the ruling by the California court system that whatever the legal name of a candidate is shall be placed on the ballot.

    My spouse was a professional dominatrix and I personally trademarked, on her behalf, both her image and her trade name; Mistress Madison. Knowing what I know now I should have hired you… it took awhile and questions were asked. We trademarked her under the classification of fashion and apparel. When the 1994 congressional elections came around we paid the fees and gathered the signatures needed to place her name on the ballot as a congressional candidate in the Reform Party. Thankfully she lost. However, the ensuing media coverage made her the most famous dominatrix in America, hands down!

    During the course of my seven years with her we had 5 dominatrixes calling themselves Mistress Madison and we sent cease and desist letters to them. Imagine their surprise! When we divorced in 1998 she received as part of the divorce her name and her likeness and I am not allowed to use them.

    A couple of weeks ago I looked up the Mistress Madison trademark and see that she has allowed it to lapse. Additionally, a search on Google reveals several Mistress Madisons are now operating in the United States and one in the United Kingdom. I am so tempted to grab it back! Creating her was so much fun. Mistress Madison has since reverted to using her maiden name and is now in another industry.

    Anyway, your article is spot on and I have thought about trademarking my own name for the day I decide to publish my book and tell all… my Hollywood secrets. I guess we should talk.

  • Trademark Lawyer, Technology Lawyer 
Seattle, Washington 
Danny Bronski
    Posted by Danny Bronski, Seattle, Washington | Feb 22, 2011

    Thanks for commenting, Rags, and I am happy you enjoyed the article. From a legal standpoint, that would have been a fascinating dispute to be involved with as a lawyer.