Many people will use their personal name when naming their business. This can be problematic because personal names are only eligible for trademark protection if they meet certain criteria.
When Can a Personal Name Be Trademarked?
A trademark is a word, phrase, symbol, or design that identifies a brand. It is a source identifier that enables consumers to distinguish one party’s goods or services from another’s. While it may seem that a personal name is ideally suited to be a source identifier, a mark must be distinctive to be trademarkable. Under U.S. trademark law, a mark that is “primarily merely a surname” cannot be protected without proof that it has acquired a “secondary meaning” or “distinctiveness.”
There are five factors to determine whether a name is “primarily merely a surname”:
- Is the surname rare? A rare surname is less likely to be considered merely a surname.
- Is the mark the name of anyone connected with the applicant? If the mark is the applicant’s own surname, it is more likely to be viewed as merely a surname.
- Does the name have any recognized meaning other than as a surname? A surname may have a meaning as an ordinary word, which would make it less likely to be considered merely a surname.
- Does the mark have the “structure and pronunciation” of a surname? Some terms may seem like a surname even if they are not a common name.
- Is the mark presented in a stylized format? If the look of the mark is distinctive enough to create a separate commercial impression, it is less likely to be considered merely a surname.
If a mark consists of a first name alone, first and last name together, or a last name combined with two initials, then the name can overcome the “primarily merely a surname” preclusion. The other requirements for a valid trademark, however, still must be satisfied for the mark to proceed to registration. On the other hand, simply adding a term to a last name that is indictive of the business structure or entity of the mark owner, such as “Co.,” “Ltd.,” or “Bros.,” is not enough for the mark to overcome the “primarily merely a surname” bar to registration.
Note that if trademarking the name of a living individual, including first names, surnames, pseudonyms, stage names, nicknames, or titles that the relevant public would perceive as identifying a particular individual, then the individual must consent to use of their name. This consent must be included in the trademark application. If the mark uses the applicant’s name, consent is presumed.
What Rules Apply to Trademarking the Name of an Artist or Author?
Artists and authors can trademark their names in connection with their works. The U.S. Patent and Trademark Office (USPTO) requires that applicants show that their name:
- Refers to a series of works (as opposed to a singular work); and
- Identifies the source of the series of works (as opposed to identifying the writer or performing artist).
What Is the Difference Between Protecting Your Name Under Trademark Law Compared to Right of Publicity Laws?
At a state level, individuals may have a right of publicity that allows them to control the use of their name, image and likeness. Trademark law provides broad protection against a third party using your trademarked name or a confusingly similar mark.
Where Can You Register Your Trademark?
Trademarks are not required to be registered. A party can register a trademark with an individual state, but that only affords protection in that state. Federal registration with the USPTO is valid across the U.S. It can also provide the basis for foreign registrations.
If you are considering registering your trademark, speak to an experienced attorney to ensure your rights are protected.
