What's in a Name?

July 2011

When coming up with a name for a new business or product, many people assume that they will avoid trademark repercussions-and that they do not need to do a trademark search-if they simply use their own name (as in "John Smith"). Personal names, however, must be treated like any other trademark; that is, a search should be conducted to determine whether the mark is available for use, and a federal trademark application should be filed to protect the name as it is used in connection with the particular goods and/or services at issue.

As with other trademarks, someone may own a "name" as it is used in connection with certain goods or services, and someone else may own that same name for use in connection with unrelated goods and services. For example, a company may own the rights to "Sarah's Delights" for food products, while an individual may own the rights to "Sarah's Delights" for a retail lingerie store. As long as the goods and/or services are unrelated (in this example, food products are unrelated to lingerie), the trademark office will allow both parties to register their respective marks.

The issue of personal names being used as trademarks has been addressed by the U.S. Supreme Court. In 1914, the Court handed down a decision that required a junior user (i.e., the second person to use the name in connection with a product or service) to change its mark from A.A. Waterman & Co. (A. A. Waterman was the defendant's name) to Arthur A. Waterman & Co. and to add the phrase "not connected with the L.E. Waterman Co." after its mark every time it appeared. Thus, under current law, a person does not have an absolute right to use his or her first or last name as a trademark; instead, a person has a qualified right to use his or her name as a trademark, and that right may include conditions imposed by a court to ensure that the public is not confused as to the sources of the goods or services. L. E. Waterman Co. v. Modern Pen Co., 235 U.S. 88 (1914). In a more recent case, a California appellate court held that the defendant was an infringer even though the mark was his own last name (the case involved two restaurants, both using the name TARANTINO'S). MacSweeney Enterprises, Inc. v. Tarantino, 235 Cal. App. 2d 549 (1965). The evolution of the state of the law as it pertains to the use of personal names as trademark was summed up in 1990 by the U.S. Court of Appeals for the District of Columbia as follows: The right to use one's name prevailed in earlier times "when the role of personal and localized reputation gave the right a more exalted status.... But its weight has decidedly diminished. The courts are now consistent in imposing tighter restrictions on the second comer in the face of possible confusion.... Other than understanding pride and sense of identity, the modern businessman loses nothing by losing the name. A junior user's right to use his name thus must yield to the extent its exercise causes confusion with the senior user's mark." Basile, S.p.A. v. Basile, 899 F.2d 35, 39-40 (D.C. Cir. 1990). In other words, personal names are less "personal" now than they were in the past; now they are instruments of commerce that must be treated like any other trademark.

Two other issues that arise in the context of using personal names as trademarks are: (i) obtaining permission from the person whose name is used in a trademark; and (ii) avoiding a rejection based on the fact that the mark is primarily merely a surname (last name). The first issue arises when the name used in a trademark is the name of a living person. In that case, the trademark office will require the applicant to represent that permission has been obtained from that person to use his or her name as (or as part of) a trademark. The second issue arises when the mark consists primarily of a surname (like "Williams") and nothing else. In those cases, the trademark office will refuse registration on the Principal Register, but registration may still be made on the Supplemental Register. (For a discussion of the differences between Principal and Supplemental registrations, click here.) Another way to avoid a "merely a surname" refusal is to combine the surname with at least one non-descriptive word, as in "Johnson's Cove" for a restaurant (the word "cove" not being a descriptive word for a restaurant).


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.