Naming a business after one’s personal name can be a popular choice, but it is important to consider the legal implications of doing so. In order for a personal name to be eligible for trademark protection, it must meet certain criteria. A trademark is a word, phrase, symbol, or design that identifies a brand and distinguishes it from other parties’ goods or services. Although personal names seem like they would be ideal for trademark protection, a mark must be distinctive to be trademarkable.
“Primarily Merely a Surname” Preclusion
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 that determine whether a name is “primarily merely a surname”: the rarity of the surname, whether the mark is the name of anyone connected with the applicant, whether the name has any recognized meaning other than as a surname, whether the mark has the “structure and pronunciation” of a surname, and whether the mark is presented in a stylized format.
Overcoming the “Merely a Surname” Preclusion
Generally, 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. However, the other requirements for a valid trademark must still be satisfied for the mark to proceed to registration. Simply adding a term to a last name that is indicative 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.
It is also important to note that if a living individual’s name, including first names, surnames, pseudonyms, stage names, nicknames, or titles that the relevant public would perceive as identifying a particular individual, is being trademarked, 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.
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 and identifies the source of the series of works, rather than identifying the writer or performing artist.
Right of Publicity Protection for a Surname
It is also important to understand 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.
Conclusion
If you are considering registering your trademark, it is recommended to speak to an experienced attorney to ensure your rights are protected. Trademarks are not required to be registered, but federal registration with the USPTO is valid across the U.S. and can provide the basis for foreign registrations.