People have been doing business under personal names or surnames for centuries, sometimes their own names, sometimes someone else’s, and sometimes the names of historical figures. There are countless examples: Ford, Disney, McDonald’s, Ralph Lauren, Martha Stewart, Napoleon, Caesar, Lincoln, Churchill, and Tesla, to name a few. You can find all these names being used as trademarks for all kinds of goods and services. Despite the ubiquity of personal name trademarks, there are rules you must follow, and sometimes those rules may work against using your own name, even though it’s your name. This Circular explains how personal names are treated under U.S. trademark law, the risks that arise in using them, and how to manage those risks.
Let’s start with a well-known court case, Taylor Wine Company, Inc. v. Bully Hill Vineyards, Inc. The facts are simple. Defendant Walter S. Taylor was the grandson of Walter Taylor, founder of the well-known Taylor Wine Company located in the Finger Lakes region of New York. In 1977, Walter S. Taylor, who owned Bully Hill Vineyards, began marketing his own line of wines labeled “Walter S. Taylor.” He also used terms such as “Original” and “Owner of the Taylor Family Estate” in his marketing materials. Taylor Wine Company, no longer owned by Walter S. Taylor’s family, sued him for trademark infringement. The U.S. Federal Court of Appeals for the Second Circuit held that Mr. Taylor went a step too far. It held that the “Taylor” name had acquired strong trademark significance in the wine field and that Walter S. Taylor was creating confusion in the marketplace. Although the Court was reluctant to bar Mr. Taylor from using his own name, it still required him to take steps to distinguish his products and limit how his name appeared in connection with his business. Later, we will see how the Taylor Wine Company addressed the tension between trademark law and the freedom to use one’s personal name.
How Personal Names Function as Trademarks – General Principles
Under U.S. trademark law, surnames are not considered inherently distinctive. In fact, it considers them “descriptive.” As a result, trademark protection for surnames, and many personal names, typically requires a showing of secondary meaning; that is, consumers must recognize it to identify a single source of goods and services. Secondary meaning is acquired over time through meaningful exposure and recognition in the marketplace. Because personal names are widely shared, a cautious approach makes sense. The law does not want to unfairly prevent others from using their own names in business. So, if you apply for a trademark that the USPTO deems to be “merely a surname,” you will receive a refusal absent a showing of secondary meaning. Historical names may avoid ‘surname’ refusals in some cases, but they remain subject to standard trademark rules, including distinctiveness, likelihood of confusion, and false connection prohibitions.
Living Persons
Problems arise when a business uses another person’s name. In those instances, trademark law requires that the person or company seeking to use that name acquire written consent from the person whose name it is. Even with consent, a trademark may be refused if it implies an affiliation, endorsement, or sponsorship by the consenting person. (A word of caution: if you intend to use another’s name for marketing your goods and services, you may also risk being sued under state right of publicity law.)
If a person begins doing business under his or her name after someone with the same name has already registered it as a trademark, the law does not treat the individuals equally, as intuition might suggest. The second user does not have an automatic right to register the name. In that instance, the rules of consumer confusion will apply, and if the second name causes confusion in the marketplace, registration will be refused. Depending upon the facts, the later user (or “junior” user) may be required to distinguish use of his or her personal name by adding distinguishing elements to the mark or include disclaimers.
Deceased Persons
Consent is not required for deceased individuals (or their estates), but a Mark may still be refused if it “falsely suggests a connection with persons, living or dead”. Some jurisdictions also recognize postmortem publicity rights, which may restrict commercial use of the name.
Ownership and Control
As with band names, which were the subject of Circular No. 5, personal names can give rise to disputes over ownership and control. Once a personal name becomes a brand asset, it no longer exists as a personal name but, rather, a commercial asset. Commercial assets are potentially subject to ownership disputes. For example, in the Taylor Wine Company case, discussed above, Walter S. Taylor’s ability to use his surname as a trademark was significantly restricted, though he retained limited rights to use his name with appropriate distinctions. Without clear agreements, disputes over continued use of one’s name may become complex. Ideally, potential disputes should be addressed at the outset, before the name acquires significant commercial value.
How to Register a Personal Name as a U.S. Trademark
Once these considerations are understood, the mechanics of registration largely follow familiar steps but with more attention to the issues discussed above. See Trademark Circular No. 1.
Back to Walter S. Taylor
Although Walter Taylor “owned” the family name and had every reason to use it as a brand, another company’s trademark rights limited how his name could be used in commerce. The court allowed Taylor to use his name, but only with clear limits. The court ordered:
We have concluded that neither Bully Hill nor Walter S. Taylor should use the “Taylor” name as a trademark, but that the defendant may show Walter’s personal connection with Bully Hill. He may use his signature on a Bully Hill label or advertisement if he chooses, but only with appropriate disclaimer that he is not connected with, or a successor to, the Taylor Wine Company. He must also be restrained from using such words as “Original” or “Owner of the Taylor Family Estate.” He must, in short, not pretend that his grandfather or his father passed anything on to him as a vintner. To the extent that Walter S. Taylor can exploit his own knowledge and techniques as a person, he may do so with the limitations noted, if he refrains from trading on the goodwill of the plaintiff company by competing unfairly.
In the business world, even your own personal name doesn’t exist in a vacuum. Once it takes on trademark significance, how it can be used is governed by the rules of priority, distinctiveness, and fair competition. With some careful planning at the beginning, you can often avoid the restrictions and disputes that might otherwise arise later.
— Adam G. Garson, Esq.