People are proud of their workmanship and service. Accordingly, it is natural that people want to name their products and services with their name, e.g., Ford automobiles, Hewlett Packard printers, etc. I suggest this is not, however, a good strategy for establishing a brand. As I continuously urge, the best trademarks are arbitrary words and symbols. Coined words also make great marks. Personal name trademarks are weak marks.
As discussed elsewhere in this blog, there are common law trademarks and registered trademarks. Common law trademarks are created when the mark is used to identify products or services. They can be designated as a trademark ™. Registered trademarks are marks that have been subject of a USPTO application, examined, published for opposition and ultimately registered. Only these marks are entitled to be designated®.
There is no absolute right to use you name as a trademark for your product or service. Clearly, if your last name is “Apple”, you cannot use your name in conjunction with the sale of music, electronics, watches, etc. Further, you would not be able to register your name for a mark for these products.
The trademark statute discusses last names (surnames) only as trademarks. Names that are primarily surnames are considered weak marks and cannot be listed on the Principal Trademark register unless they have acquired secondary meaning, i.e., as a result of use the name has come to identify a single source of origin for particular goods or services. Secondary meaning is deemed acquired if the mark has been used continuously in commerce for more than 5 years.
If the mark appears to be merely a surname, it is necessary to show secondary meaning. Five factors will be considered whether the mark appears to be merely a surname, i.e.,
- Is the surname rare or common, “Smith” versus “Pecatonica”;
- Is the word the surname of anyone connected to the trademark applicant?
- Does the word have recognized meaning other than as a surname;
- Does is have the “look and feel” of a surname; and
- Is the stylization of lettering sufficiently distinctive to create a separate commercial impression.
If the initial impression of the mark is that it is a surname, it will be necessary to show secondary meaning in order to obtain registration.
Ignoring the issue of registering your name as a trademark, note that even though McDonald may be your last name, you can not use McDonald as a mark having anything to do with food. There is no inherent right in a business owner to use his/her last name as a trademark for their business. There may be an issue of likelihood of confusion with an exist mark. Also the name may cause dilution of a prior mark, even if the products or services are different. A person named “Victor” could not use the mark “Victor’s Secret” for an adult bookstore since it was deemed to dilute the mark “Victoria Secret”.
The court has stated:
“[A] person has no right to use his name as a trademark simply because of the fortuity of his parents and their choice of names. The world is full of people who cannot use their names in whole industries: Marriotts in motels, Hugheses in oil tools, and McDonalds in fast foods.”
W-K-M Div. of Joy Mfg. Co. v. WK Industries, 2 U.S.P.Q.2d 1967, 1987 WL 15500
You can not use a surname as a registered trademark without showing secondary meaning. You can use a personal name, i.e., a first name or two initials plus a surname, (i.e., J.R. Smith) as a trademark without secondary meaning. However, if someone is already using your name as a mark in a related area (likely to cause confusion it the mind of the public) then you can’t use your own name. Also if you name is the same as a celebrity, you can’t use you name if the use would raise “a false suggestion of connection” with the celebrity (living or dead).
The bottom line is that you have a limited right to use your name as a trademark. Also, at best, your name is a weak mark. Again, I strongly encourage using a coined word or arbitrary or fanciful use of an existing word as your mark. It will be a much better tool for establishing your brand.
Copyright David McEwing, 2019