USE OF PERSONAL NAME AS TRADEMARK
CAN BE REWARDING, YET RISKY

by
Sheldon Mak Rose & Anderson

Many owners of new businesses would like to use their own name, or the name of someone associated with the business, as their trademark. Although many of the strongest trademarks in American commerce did originate as surnames, such as "Ford," "Chevrolet," and "Chrysler" in the automobile industry, the use of a personal name as a trademark can cause unexpected pitfalls. Personal Name Treated as Descriptive When a personal name is used as a trademark, it is treated by the Patent and Trademark Office and the courts as a descriptive term, with proof of secondary meaning or distinctiveness required for either protection as a trademark by the courts or federal registration with the Patent and Trademark Office. The most likely reason for this requirement is that the use of a personal name as a mark does not pinpoint one individual source of goods without proof of distinctiveness and should not be the basis for preventing others with the same or a similar name from using it in their own businesses. For example, if a person surnamed "Smith" starts a business and puts that name on his goods as a trademark, the use of "Smith" merely describes to the public that someone surnamed "Smith" has something to do with the goods. Which Smith, the public does not know, and there may be more than one person with that surname in the same business. Therefore, to gain trademark status, proof of distinctiveness or secondary meaning must be shown as an indication that the public regards the goods marked "Smith" as coming from a single source. Under the Lanham Act, 15 U.S.C.  1052(e), a mark which is "primarily merely a surname" is not federally registrable on the Principal Register without proof of secondary meaning. Such marks can be registered on the Supplemental Register without such proof. The Patent and Trademark Office generally defines "primarily merely a surname" liberally in favor of the trademark applicant, holding that a word is "primarily merely a surname" only if the only significance of the word to the public is as a surname. This is a subjective test, looking at the probable reaction of consumers in the marketplace. When an applicant attempts to register what might in fact be a surname, the initial burden of proof is on the Patent and Trademark Office to establish a prima facie case that the word is primarily merely a surname. The most common showing made is that there are an "unusually large number" of telephone directory listings of the word as a surname. This is, of course, not the only factor. Even a relatively rare surname not found in most telephone books can still be "primarily merely a surname" if by their very nature they could have only a surname significance. Examples have included "Seidenberg" for cigars and "Dourthe" for wine. Other factors are also relevant in determining whether a questionable mark should be regarded as primarily merely a surname. For example, if the word is actually the name of the applicant or someone in the applicant's organization, it is much more likely to be considered a surname. If initials, a first name, or a term indicating family significance, such as "and Sons" or the French "et Fils" is used with the word, it is also much more likely to be considered a surname. By contrast, if the word does have significance other than as a surname, then registration on the Principal Register is allowed without proof of secondary meaning. Such marks have included "Bird" for radios and "Kent" for cigarettes. If proof of secondary meaning is required, it can be in any of the usual forms. For example, evidence of the amount and nature of advertising of the mark, the length of time of use of the mark, and the volume of sales under the mark can establish secondary meaning. Under the Lanham Act, 15 U.S.C.  1052(f), proof of substantially exclusive and continuous use of a mark for five years preceding application for registration can be accepted as prima facie evidence of secondary meaning. Other evidence of secondary meaning can come from declarations or affidavits by retailers or consumers, or from a survey. In either case, care must be taken to ensure that the opinion of the relevant audience is being sampled. If the relevant buyer class is retail consumers, testimony from wholesalers or retailers can be irrelevant. Consent to Register Must Be Filed Under 15 U.S.C.  1052(c), a mark which "consists or comprises a name, portrait, or signature identifying a particular living individual" requires that the written consent of that individual must be filed with the Patent and Trademark Office for the registration to be valid. The mark in question need not be a full name. It can be a surname only, a given name, or even a nickname, as long as it identifies a particular living individual. Nor will the addition of other material to the name, such as a brief description of the product, relieve the requirement for the filing of a written consent. The requirement of a written consent to register is not met by the mere existence of a consent to use the name. The consent must in fact be a consent to register the mark in question. In fact, even a license to use the name as a mark is not sufficient if a written consent to register is not filed. It is not necessary to obtain a written consent in a case in which a coined name is used as a mark but the coined name happens to be identical to one held by a particular individual. The Trademark Trial and Appeal Board has held that this section of the Lanham Act is triggered only if the individual bearing that name would be associated with the goods, either because that person is so well known to the general public that the public would assume that the mark identifies that celebrity, or because the person bearing that name is publicly connected with the business in which the mark is used. The latter situation, of course, can occur because of advertising or publicity by the business itself that links that individual with the business. If written consent to register a mark should be filed and is not filed, the consequences can be severe for the party owning the mark. When the mark is published for opposition, the mark can be successfully opposed by the person so identified or anyone else with sufficient standing on the ground of failure to file such a written consent. Even if the mark is registered, a failure to file a written consent can still be used as a basis to cancel an already-registered mark. In fact, defenses such as laches, acquiescence, or estoppel that are effective against many grounds for cancellation are ineffective when a written consent has to be filed and was not. Even the incontestability of the mark does not provide any defense to such a basis for cancellation. In fact, the failure to file such a written consent leaves the mark voidable ab initio. Conclusion Although a personal name can be an effective trademark, any attorney who seeks to ensure the maximum degree of protection for such a mark must take certain precautions: If the mark is going to be considered as primarily merely a surname, either because it is a common surname, such as "Smith," or because it can have no other significance to the public, such as "Seidenberg," be certain that sufficient proof of secondary meaning in a form acceptable to the Patent and Trademark Office is available if the mark is to be federally registered. If the mark identifies a particular living individual, be sure that a written consent of that individual to the registration of the mark is filed with the Patent and Trademark Office when the mark is registered. Failure to file such a written consent leaves the mark voidable and always vulnerable to cancellation. If these precautions are met, marks based on personal names can prove an effective means of trademark protection whose scope can grow with the enterprise bearing the personal name.