Originally, the protection of Trademarks and Service marks was created to reward businesses for developing quality products and services. In addition, Trademark laws prevent consumer confusion. However, Marks which primarily use a person’s name may not be associated with a business and may merely a descriptive mark which will qualify for little if any protection. As a result, surnames are not given protection as trademarks until they achieve secondary meaning through advertising or long use. A trademark is primarily a surname if the public would recognize it first as a surname or if it consists of a surname and other material that is not registrable. Distinctive names usually receive protection under federal and state trademark law. A trademark which consists of a personal name is entitled to legal protection when it attains secondary meaning, although the courts frequently permit an unsuccessful defendant to continue using his or her name in their business in a modified way or with explanatory phrases in order to minimize confusion.
Merely descriptive marks are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all because it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks. However, it is possible for descriptive marks to become distinctive by achieving secondary meaning.
Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source-indicating function. Once it can be shown that a descriptive term or phrase has achieved this second meaning then a protectable trademark is developed. Secondary meaning can be achieved through long term use or through large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys, showing that consumers recognize the mark as a brand.
In cases where the use of a personal name is sought to be enjoined, the courts ordinarily balance several competing interests, including the following:
the interest of the plaintiff in protecting the good will which has attached to his or her personal name trademark,
the interest of the defendant in using his or her own name in business activities, and
the interest of the public in being free from confusion and deception.
The Lanham Act, which sets forth the ”fair use” defenses, permits non-trademark use of personal names. Where the defendant does not have the name in question or where the connection between the defendant and the individual with the name on which he or she relies is spurious, that person is not entitled to raise the defense and has no greater standing than if a personal name were not involved. In this situation there is no compelling reason for a court to award less than complete relief. The courts also favor the granting of some form of injunctive relief where the defendant is using his or her personal name in a deceptive or unfair manner by seeking to foster public belief that defendant either is the plaintiff or is affiliated with the plaintiff. Although conduct showing an intent to deceive or defraud is material in surname cases, the absence of wrongful intent does not preclude the granting of relief where the plaintiff’s surname mark has attained secondary meaning and the public is likely to be confused.
Types of Relief
A court may enjoin all trademark use of a name but permit another use. This approach involves an unqualified injunction insofar as commercial use is concerned and is utilized in intentional infringement situations or where confusion cannot be prevented any other way. A defendant would be enjoined from making trademark use of the type that the public would be likely to regard as identifying its products or services and distinguishing them from those of others so as to prevent confusion on the part of the public. Non-trademark or personal use does not identify the business or its products to the public and is less likely to cause confusion. Another approach holds that the surname defendant be required to take reasonable precautions to prevent public confusion and deception. This allows the defendant to use his or her surname as a trademark, but requires either that such use be varied from that of the plaintiff or that the defendant accompany such use with an explanatory phrase, or both. Under this approach, courts frequently require the use of first names, initials, prefixes or designations of business location but still permit trademark use.
A trademark will not be registered if the trademark is primarily a person’s full name or surname, or that of another individual. An exception to this rule is if one can prove that the wares or services have become known under that name, such that the word now connotes more than a person’s name or surname in the public’s mind. Another exception to this rule applies when the name or surname has meaning other than just as a name or surname, such as when it is also a recognizable word. A trademark which is primarily merely a surname is disqualified from registration on the principal register until it has become distinctive of the applicant’s goods in commerce. However, it may qualify for supplemental register registration if it is capable of distinguishing the applicant’s goods or services.
Burden of Proof
The burden of proving the mark is primarily merely a surname is on the United States Patent and Trademark Office. If the USPTO does not sustain its burden, the mark will be entitled to registration without a showing of secondary meaning. If the USPTO does sustain its burden, however, the applicant must prove the mark has become distinctive.
The person whose name is sought to be registered, if not the applicant, may give written consent to the applicant. The consent is then furnished to the USPTO. The consent should expressly grant permission to the applicant both to use and to register the name. If the name is that of a fictitious person then the applicant should state that in the application.
Discouraging government employees from capitalizing on confidential information they become privy to during the course of employment
Arming owners of a trade secret with a sufficient remedy in the case of disloyalty