The internet has the power to turn an individual into an overnight celebrity. Or, in other words, it can turn a person into a brand. This raises the question, can someone obtain a registered trademark in their personal name?
The short answer is yes, but in very limited circumstances. The Lanham Act states that a mark that is primarily “merely a surname” can only be registered on the Principal Register with proof of secondary meaning. For celebrities, this burden can often be met. But for everyone else, secondary meaning is difficult to obtain.
Often times, individuals wish to register their name as a service mark. While trademarks and service marks provide substantially the same rights, a service mark identifies the source of services, rather than goods.
Pursuant to 15 USC 1127, and as summarized by 1301.02(b) the Trademark Manual of Examining Procedure, a name must do more than identify a character. In contrast, it must identify and distinguish services in addition to identifying the character.
Anytime trademark questions arise, it is important to focus on the purpose of trademark law: protecting the public by preventing marketplace confusion. In other words, the question regarding whether names can be registered is not just the name itself, but rather, does the public recognize the use of the name as identifying a particular source of goods or services.
The level of connection required between your name and what your doing can be difficult, but not impossible, to prove. The more established a business, with evidence proving the volume of sales and consistent advertising measures, the better the chance of proving the required connection.
One final note, the level of secondary meaning required for registration increases when the use of a personal name is traditional for a specific profession. For example, law firms must have a “strong” showing of secondary meaning, otherwise the ability to create new law firms or the ability of a specific attorney to practice would be substantially hindered.
If you are considering protecting your name through trademark or service mark protection, contact our trademark attorneys today.
Under 15 U.S.C. § 1052(e)(4), the USPTO will refuse to register a mark on the Principal Register if it is “primarily merely a surname.” The rationale for this rule is the same as the rationale for refusing registration of descriptive terms: surnames are common identifiers shared by many people, and granting a single individual or business exclusive rights to a surname as a trademark could unfairly impede others with the same name from using their own name in commerce.
The USPTO determines whether a mark is primarily merely a surname by considering: (1) the frequency of the term as a surname in the United States; (2) whether anyone connected with the applicant has that surname; (3) whether the term has any recognized meaning other than as a surname; (4) whether the term has the “look and feel” of a surname; and (5) whether the term is stylized in a manner that takes it away from looking like a surname. See In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir. 1985).
To overcome a surname refusal through secondary meaning — also called acquired distinctiveness — the applicant must show that the relevant consuming public primarily associates the name with a single commercial source rather than recognizing it as a surname. Evidence of secondary meaning includes: (1) the length and exclusivity of use; (2) the amount and type of advertising and promotional expenditures; (3) sales figures and consumer recognition data; (4) declarations from consumers and industry professionals; and (5) intentional copying by competitors.
For high-profile individuals — athletes, entertainers, authors, public personalities, and social media influencers — the personal name trademark question has significant commercial implications. A celebrity’s name, when used to identify a line of products or services in commerce, can acquire enormous trademark significance. The challenge is demonstrating to the USPTO that the public recognizes the name as a trademark, not merely as the person’s name.
Successful examples include: the registration of “DRAKE” for musical recordings and live performances; “TAYLOR SWIFT” and “BEYONCÉ” for various goods and services; and numerous athlete names registered for endorsement merchandise. In each case, the applicant demonstrated that the name functioned as a source identifier — that consumers purchasing DRAKE-branded merchandise understand that the name designates a particular commercial source.
The key distinction, as reflected in the TMEP provision cited in the original post, is between a name that identifies a person and a name that identifies a commercial source. Kim Kardashian is a person. “KIM KARDASHIAN” as used on cosmetics, shapewear, and fragrances is a trademark. The distinction is functional, not semantic.
It is worth noting that trademark registration is not the only legal mechanism for protecting one’s name from commercial misappropriation. The right of publicity — a tort recognized by most states — prohibits the unauthorized commercial use of a person’s name, image, or likeness. Unlike trademark law, the right of publicity does not require that the name function as a source identifier; it protects the individual’s interest in controlling the commercial exploitation of their identity.
However, the right of publicity has geographic limitations (it is a state law right, not federal) and does not provide the same type of marketplace protection that a registered trademark does. For individuals building a commercial brand around their name, trademark registration and right-of-publicity protection work in tandem: the trademark protects the name’s function as a source identifier in commerce, while the right of publicity protects against unauthorized commercial use of the individual’s identity.
If you have questions about trademark registration or enforcement, contact the trademark attorneys at Revision Legal. Call us at 855-473-8474 or complete our contact form.
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