The recent post by Paola Norambuena, regarding linguistic checks for the names celebrities bestow their offspring, prompted discussion on whether or not a trademark clearance of your baby’s name is the next step. While this may be taking things a little too far, it should be noted that Shiloh Nouvel Jolie-Pitt was the focus of a trademark opposition case in 2007, when her mother waged a legal battle against a French perfume maker that applied to register the name “Shiloh” with the U.S. Patent and Trademark Office. In the end, Ms. Jolie dropped the case, and we can assume that the perfume maker was grateful for the free publicity.
Many of the world’s best global brands are personal names; McDonald’s, Louis Vuitton, J.P. Morgan, Philips, Ford Motors, Heinz, Colgate, Chanel, Tiffany & Co., Prada, Ferrari, etc. But in the U.S. it can be a challenge to obtain trademark protection for a personal name because it is regarded as descriptive, and descriptive marks are not entitled to automatic legal protection.
While the initial burden of proof is on the PTO to establish that the mark is primarily merely a personal name, things get complicated when you factor in variables such as; use of a surnames vs. just a first name (considered weaker, and by themselves do not receive much protection); whether or not the public understands the personal name is a personal name; if the name belongs to a real/living person (who must give consent); if the personal name is used in the context of just being a personal name or is a suggestive name (e.g. “Niles” or “Lawrence” for a toy camel); and, by contrast, if the word does have significance other than as a surname (e.g. “Bird”).
Of course, personal names do achieve registration and secure protection, and names such as Levi’s, Versace and Gucci are connected with offerings that no one with the same name could infringe. This occurs once secondary meaning is established, when a substantial portion of the consuming public associates the name with a particular product or service, thereby establishing that the name has acquired distinctiveness.
For businesses eager to use a personal name as a brand, our advice is you must be prepared for the time and effort it can take to establish secondary meaning, and accept the lack of legal protection your name will initially receive. And while you’re at it, have a linguistic check performed!