When a new business is adopting a mark that will serve as the source identifier for their goods or services, a common option chosen is the surname of one of the company's principals. Often, the thought is that using a particular person's surname as a brand name will help create a correlation in the minds of consumers between the products or services offered and the person offering them. However, there are certain limitations with respect to obtaining a trade mark registration for a mark that consists solely of a person's name that a company should bear in mind when choosing to adopt their personal name as a brand name.
Under US trade mark law, a mark that is primarily merely a surname is not eligible for registration on the Principal Register absent a showing of acquired distinctiveness. This means that a certificate of registration on the Principal Register cannot be issued for any mark for which the primary significance to the purchasing public is that of a surname (and not some other meaning) unless the owner can show that the mark has acquired distinctiveness. Exclusive rights in a surname cannot be established without providing evidence of continuous and exclusive use of the surname in connection with the goods or services offered, typically for a period of five years (which establishes a certain level of presumptive distinctiveness). Such continuous and exclusive use serve to change the significance to the public of the mark from that of a surname to that of a source identifier. This rule would, for example, prevent a party from seeking to reserve exclusive rights in a mark comprised solely of a surname though the filing of a trade mark application filed on an intent-to-use basis.
However, whereas marks comprised of solely a surname cannot be registered on the Principal Register without a showing of acquired distinctiveness, marks consisting of one's full personal name (both first name and last name) have been held by trade mark tribunals to be inherently distinctive and no demonstration of continuous and exclusive use is required in order for a certificate of registration to issue. Accordingly, rights in a full personal name can be reserved though the filing of a trade mark application on an intent-to-use basis.
Nonetheless, prior to adopting one's personal name as a source identifier, it is recommended that a US trade mark attorney is retained to conduct the appropriate trade mark clearance search to ascertain whether there are any third party impediments to the use of such personal name. Even though a personal name may be inherently distinctive, a person does not have the absolute right to use his or her own name in connection with their business if the result would be to create a likelihood of confusion with another's established use and registration of the same or confusingly similar mark.
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| Karen Artz Ash and Bret J Danow |
Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com