A client recently asked whether he could apply to register his personal name as a trademark.  Of course, just ask Lebron James, Sarah Palin, Arnold Schwarzeneggr, or Elvis (if you catch sight of him), all of whom registered their names as trademarks.  Does that mean if your name is “Joe,” you can register “Joe’s Bar” for restaurant services?  Not exactly, there are some rules.
First, your name must be distinctive.  That is, when people see your name they have to first think of the goods or services you are branding, not you personally.  How does this happen?  Well, you use your name as a trademark, you spend a lot of money investing in the branding process, and, if you’re successful, it eventually happens.  It’s called “secondary meaning”.  We’ve written about secondary meaning or acquired distinctiveness before.

Second, your name cannot be confusingly similar with other trademarks in use.  So, if your name is Joe and you run a bar, imagine how hard its going to be to prevent confusion between your bar and “Joe’s Bar” on the other side of town.  (Of course, you cannot register a mark with the U.S. Patent and Trademark Office unless you are using it in interstate commerce).

Finally, if the person is still alive, you have to obtain that person’s permission to use his or her name as a trademark.  If it’s your name, you also have to file an affidavit saying so.

Having a famous name but not being famous can also get you into trouble.  Take for example the recent news story about Maryland State Senator Steve Hershey.  During his recent political campaign, Hershey was sued by Hershey Company for using brown rectangular boxes around his name in white lettering, resembling Hershey Company’s famous logo.  The Hershey Company didn’t object to Hershey’s using his name – after all, it’s his name – but it did object to his using “Hershey” in a manner that suggested an endorsement or sponsorship by the company.  Even stranger is that Hershey had the same dispute with the Hershey Company in previous campaigns.  On July 22nd, the federal district court issued an injunction against Hershey, preventing him from using his signs.  The court opined that his signage suggested an endorsement where no endorsement existed.  We still await a final ruling.

— Adam G. Garson, Esq.