Are You Able To Trademark Your Name?

With the continued growth of athletes and celebrities as role models in addition to the continued importance of intellectual property in their lives, it raises the question of whether they can trademark their names. “Under §2(e)(f) of the Trademark Act, a mark that is primarily a surname [family name] is not registrable on the Principal Register absent a showing of acquired distinctiveness [secondary meaning] under §2(f).” In order to acquire distinctiveness, the applicant must provide evidence of long and exclusive use of the mark, which changes the public significance of his/her surname to that of a mark for particular goods and services. The mark’s primary significance to the public is what determines if the mark is merely a surname. There are five factors which the Trademark Trial and Appeal Board uses to determine whether a mark is deemed to be primarily a surname, which are: (1) Whether the surname is rare; (2) Whether the term is the surname of anyone connected with the applicant; (3) Whether the term has any recognized meaning other than as a surname; (4) Whether it has the “look and feel” of a surname; and (5) Whether the stylization of lettering is distinctiveness enough to create a separate commercial impression. There is case law that supports the above-mentioned statute regarding the trademark of a surname. For instance, in In re Etablissements Darty Et File, the mark was the surname of a principal of the business as well as the company name, which the court determined as highly persuasive that the public would perceive it as merely a surname. As a result, the court held that the mark was primarily a surname, thus is not worthy of registration on the Principal Register. However, there are cases where the Trademark Trial and Appeal Board has not applied the statute appropriately. For example, in In re Hutchinson Technology Incorporated, the court determined the Board made a critical error by considering the mark of Hutchinson Technology as two separate parts rather than considering the mark in its entirety. The court overturned the Board’s denial of the registration of the mark Hutchinson Technology. There are a number of celebrities that have successfully trademarked their names and recently we have seen college athletes file trademarks of their names as well as their nicknames. In 2010, presidential candidate Sarah Palin and her daughter Bristol Palin successfully trademarked their names. The mark of Sarah Palin is a service mark and includes the goods and services of information about political elections and providing a website featuring information about political issues as well as educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business, and values. The mark of Bristol Palin is a service mark and includes the goods and services of educational and entertainment services, namely, providing motivational speaking services in the field of life choices. In November 2014, Mississippi State University quarterback Dak Prescott filed for a trademark in his name. Dak Prescott is a service mark and includes the goods and services of athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms and t-shirts. Also, it includes educational and entertainment services, namely, providing motivational and educational speakers; educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; educational and entertainment services, namely providing motivational speaking services in the field of sports, sports training, fitness training. Earlier this year, Heisman trophy quarterback Jameis Winston applied for a trademark registration of his nickname “Famous Jameis.”  Those two applications have been filed on a 1(b) intent-to-use basis. At Heitner Legal, we are a full service law firm specializing in intellectual property. We can assist you with all of your intellectual property needs including filing and obtaining a trademark. We can you guide you through this challenging process in order to ensure that you have the necessary protection of your trademark. Resources: Trademarks registerable on principal register; concurrent registration, 15 U.S.C. §1052 http://tmep.uspto.gov/RDMS/mashup/html/page/manual/TMEP/Oct2012/TMEP-1200d1e9735.xml In re Hutchinson Tech. Inc., 852 F.2d 552, 554-555 (Fed. Cir. 1988). In re Etablissements Darty Et File, 759 F.2d 15, 17 (Fed. Cir. 1985).  

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