When Can I use my Name, Nickname or Initials in the Trademark?

Trademarks using personal names, nickname or initials are quite popular, especially among small businesses. However, they rarely make a good trademark.

But first a small history lesson… One of the reasons the personal names were not protected in the past is the idea that nobody should have an exclusive right to a personal name. Unless the mark obtained secondary meaning in connection with particular goods or services, it would be unfair to allow one John Smith to prevent all of the other Smiths from using their names for their businesses. That is why back in the days it was almost impossible to register a name as a trademark. Now, the situation has changed – individuals still have the right to use their names but only if they are not similar to other people’s names, which became a part of well-established trademarks. For example, if your last name is McDonald, you will not be able to open your own restaurant under this name (similar situation with the last name Lauren for fashion or Hilton for hotel business).

Trademarks with personal names are usually weak and take a lot of time and effort to become strong. It is very likely you can find a business in a local issue of Yellow Pages with the same or similar personal name in the title, which means that such trademark will not be able to effectively distinguish your products or services from your competitors’. If you name your business Jane’s Hair Salon, and your potential customer hears someone talks about it and thinks, “I know I’ve heard about two salons with similar name. Which Jane’s Hair Salon are they talking about?” Well, you got the idea…

But it does not mean that personal names can never be used as a trademark. Below are the situations when use of the names is permissible:

Last name

· If you have a very rare, strange or unique name (e.g. Orville Redenbacher), it can be a very strong trademark.

· If you have used a personal name as a part of the trademark for a long time, that it acquired secondary meaning, and the public started associate a personal name with your goods services. McDonald’s or Levi’s once were ordinary names, which obtained a separate meaning through extensive use on the market as trademarks.

· If your name has an additional meaning (e.g. John King, Tom Green), which does not describe your products or services.

· Famous historical names (e.g. Ceaser, Lincoln, Da Vinci, etc.). It is implied that the mark is most likely used as a non-personal name.

· Marks that are “primary surnames” do not qualify for a federal registration, unless they acquired a secondary meaning in connection with the goods or services throughout a substantial use or with an additional term(s) that makes the combination inherently distinctive as a whole.

First names and Nicknames

First names are usually ever weaker that the last names as they are very common. However, they can be used with additional term to become distinctive for the trademark purposes (for example TRADER JOE’S). Like with last names, you cannot use your first name in the same line of business if it is too close with the famous name. For example, if you name happens to be Gucci Johnson, you won’t be able to use your first name to start a clothing line under GUCCI’S APPAREL).

Initials

Using your initials is the same as using your first or last name – it does not strengths or weakens your trademark. All of the above rules for the last and the first names apply to the initials. However, if a trademark consists completely of letters, which are not persons initials, it can be quite distinctive (for instance, PSF).

In addition, please keep in mind that someday you will want to sell your business and your name, which became a part of the trademark, will be transferred along with the business. That means that a stranger will operate under your name and may prevent your children or relatives to use their name in their future businesses.

Please visit www.ownyourtrademark.com or www.lzlawoffice.com to learn more about trademarks.

Alex Lazouski 2010 © www.ownyourtrademark.com