Some of the world’s most recognizable brands are actually someone’s name: Christian Dior, Estée Lauder, Jack Daniel’s, John Deere, Kate Spade, etc. But can someone’s own name function as their mark? As long as that name is used to indicate the source of particular products or services, then yes – absolutely! This doesn’t mean you’ll be able to stop other people from having the same name as you, but it does mean that if you sell shoes with your name on the box, you should be able to stop someone down the street from opening a new shoe store with your name above the door – even if that business owner happens to have the same name as you.
Challenges
There are a few things to look out for with this type of mark. For example, if you want to register your name as a mark with the USPTO, there are a few extra things you’ll have to submit with your application to establish that the mark you’re applying for is your name and that you consent to its registration as a mark. A competent trademark attorney can guide you through that process.
What you cannot do is try to register the name of some other living person as your mark without their consent. You would be amazed how often the USPTO receives applications to register the names of famous people when the people who filed those applications have no connection with the famous people and no authorization from the famous people to register their names as marks. That’s a fast track to a refusal.
You may also run into problems if your name is a fairly common one. Just because you can produce a birth certificate with your name on it, that does not automatically mean that you have the exclusive right to use that name as your mark. If, for example, a musician starts performing under her name and gets a registration with the USPTO for use of her name with live musical performances, another musician with the same name who first takes the stage a year later and decides she wants to register her name with the USPTO for use with live musical performances will find her application blocked by the earlier musician’s registration.
The most recent real world example is the dispute between the U.S. singer Katy Perry and the Australian fashion designer Katie Perry. The two are now in a legal battle over who can use these names as their marks in connection with clothing. The designer Katie Jane Taylor has operated the clothing label KATIE PERRY (her birth name) since 2006 and holds an Australian trademark registration for the mark. Pop singer Katheryn Elizabeth Hudson performs under the name KATY PERRY (to avoid confusion with the American actress Kate Hudson) and became famous after the single "I Kissed a Girl" was released in 2008. Back in 2009, the singer's lawyers sent a cease and desist letter to the designer. But in 2019, the designer turned around and sued the singer for trademark infringement, arguing that the singer sold clothing under the mark KATY PERRY in Australia, particularly in connection with her tours there. Bottom line: just because it’s your name, that doesn’t necessarily mean you’re free to use it as your mark.
Note that in this post we’re talking about registrations for your full name (like Dana Dickson), not just your surname (like Dickson). Surname refusals are one of the most common refusals issued by the USPTO. You may run into this refusal if your mark consists entirely of wording that is primarily merely a surname. That’s another post for another day.
The usual suspects
You won’t be surprised to learn that there are U.S. federal trademark registrations for the names of celebrities like Britney Spears, Kim Kardashian, Ariana Grande, Cristiano Ronaldo, Taylor Swift and Kylie Jenner (note: these registrations are often held by corporate entities and not directly by the individual celebrities). What are the marks registered with? Again, some of the answers won’t surprise you. The marks KENDALL JENNER, KYLIE JENNER, KIM KARDASHIAN, TAYLOR SWIFT, BRITNEY SPEARS, ARIANA GRANDE, JUSTIN BIEBER, and CRISTIANO RONALDO are all registered for use with fragrances. So. Many. Celebrity. Fragrances. But did you know that the marks TAYLOR SWIFT, BRITNEY SPEARS, and CRISTIANO RONALDO are all registered for use with dolls?
And you might be surprised to learn that the mark TIGER WOODS is registered for use with building construction, ED ELLEN DEGENERES is registered for use with quilts, TRAVIS SCOTT is registered for use with temporary tattoo transfers, and TAYLOR SWIFT is also registered for use with Christmas stockings, puzzles, and picture frames. Some celebrities even register their names as marks for charitable services. The mark CRISTIANO RONALDO is also registered for use with “organizing, arranging, and conducting soccer events, the proceeds of which are donated to charity; organizing and conducting sporting events for the purposes of helping high school students earn athletic scholarships to college; charitable services, namely, providing sporting goods to underprivileged children.”
Not just for celebrities
While it’s common practice for celebrities to register their names as marks, you don’t need to be famous to register your own name as a mark. It’s a practical business move for plenty of non-celebrities, too. Many people who aren't famous still register their names as their marks because they want to ensure that no one else can provide products or services related to theirs under the same name or one that is so similar it might confuse clients or potential clients who are trying to connect with them. And because they don't want to receive a Cease and Desist letter from a company on the other side of the country saying that company used a similar mark before they did and that they have to re-brand or not work with clients located in a specific geographical region. If it’s your name that your clients trust to deliver the products or services they know, love, and want more of, then it makes sense to protect it just like any other mark.
This information was posted on March 1, 2022 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.