A lot of companies use a person’s name as part of their company name and advertising with the assumption that if it is their name, then they should be able to use it to promote their goods and services. However, protecting and registering a personal name as a trademark is not always that simple.
First, it is important to distinguish between a personal name and a surname or last name. U.S. Trademark law prohibits registering a trademark that is “primarily merely a surname,” i.e. a name that is generally thought to function primarily as a person’s last name such as Smith. In trademark law, a personal name is a person’s first and last name.
Courts have generally recognized a right for a person to use their own name as part of their company name and brand identity. On the other hand, personal names can be difficult to register as trademarks because they are treated as descriptive trademarks. Descriptive trademarks describe some ingredient, quality or characteristic of the product or service being sold under the trademark. For example, a consumer seeing the name Joe Smith’s Hardware Store may well conclude that they have encountered a hardware store that is run by someone named Joe Smith. If that is the case, the name is not functioning as a trademark.
As a result, personal names are not considered to be inherently distinctive and are only protectable when the trademark owner can demonstrate “secondary meaning” which is to say that consumers have to understand that the name refers to a particular service or product. That requires the trademark to be in use long enough that consumers will perceive the name as a brand name instead of a description of the business’s products or services.
There are three basic ways to demonstrate acquired distinctiveness. First, the Applicant can demonstrate they own one or more prior registrations for the same trademark in connection with similar goods and services. Second, they can file an affidavit indicating the trademark has become distinctive of the Applicant’s goods or services through “substantially exclusive and continuous use” of that trademark in commerce for a period of five years. Third, the Applicant can provide other evidence that consumers have come to recognize their name as a source identifier including the following:
1. Advertising and promotional materials showing the trademark used as a brand identifier;
2. Financial data showing extensive advertising promoting the trademark;
3. Statements from consumers and dealers indicating their recognition of the trademark as a brand;
4. Survey evidence from consumers showing their recognition of the trademark; and
5. Any other evidence that shows consumers recognize the trademark as a trademark for the goods which it is used.
If a trademark owner wants to prevent others from registering a similar name for a similar service before their trademark has acquired distinctiveness, then they can register them on the Supplemental Register. While doing so does not carry with it the same rights as a registration on the principal register, it does (1) prevent the USPTO from allowing someone to register a similar name for a similar product or service and (2) allows the trademark owner to use the ® designation.
While a business owner generally has a right to use their personal name in their advertising, protecting the name can require some planning and strategizing.
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