Naming Rights -- and Wrongs: A Road Map to Protecting Personal Names

In this Analysis, Anne Gilson LaLonde surveys why and how personal name marks receive special treatment in trademark law, how personal name marks can be valid, enforceable marks, and how one can register them with the USPTO. She also discusses fair, non-trademark use of one's personal name, protection of personal names in domain names, and the right of publicity to personal names. Finally, she analyzes the relief that has been granted in personal name cases. Ms. LaLonde writes:

a. Personal Name Secondary Meaning in General.

     In federal court litigation, personal names (first names, surnames, or a combination of the two), because they do not immediately convey a particular source, are not considered inherently distinctive. In order to prove that a personal name is a valid trademark, its owner must prove that consumers have come to understand the name to refer to a particular product or business. For example, a consumer seeing the first McDONALD'S restaurant might have simply thought that someone named McDonald was associated with the restaurant and did not see the name as a trademark. Today, McDONALD'S has gained an extraordinary amount of acquired distinctiveness and is plainly a protectable trademark. The term's primary meaning is as a surname, conveying simply that the business is associated with a person, but its secondary meaning is as a trademark, conveying an association with a particular source of products and services. Consumers have come to see the name as signifying a business rather than a person connected to the business.

     . . . .

     In general, for personal names and other descriptive terms, it is difficult to prove secondary meaning in federal court. The burden is a heavy one. For example, the First Circuit [in Flynn v. AK Peters, Ltd., 377 F.3d 13 (1st Cir. Mass. 2004)] found that plaintiff Anita Flynn failed to meet the "vigorous evidentiary requirements" of secondary meaning for her personal name. Flynn had submitted evidence that she had worked in her field for several years, had given seventy invited talks and had written twenty-nine papers in her field. She also stated in an affidavit that "a handful of strangers have told her that they recognized her from a talk or that they had read her book," and her nephew submitted an affidavit stating that a graduate student he met who worked in Flynn's field had said that Flynn was "famous." The court was dismissive of this anecdotal evidence, suggesting that it would be more important for plaintiff to prove, for example, how likely it would be for the average consumer of books in her field to be aware of the papers she had authored: "It is the mindset of these likely consumers and not simply the strength of her publication record in the abstract that matters in determining whether secondary meaning has attached."

     . . . .

IV. Infringement

     Personal name marks may infringe or be infringed just like any other trademark. Once a court has determined that a personal name is a valid trademark, and has priority, it may go on to consider the question of trademark infringement.

     Proof of trademark infringement requires proof of a likelihood of confusion, that consumers are likely to mistakenly believe that the plaintiff manufactures the defendant's product or that the plaintiff sponsors or approves of the defendant's product. Courts examine several factors to determine whether confusion is likely, the most important being the similarity of the marks, the similarity of the goods, and the existence of actual confusion.

     Courts focus on the same elements in personal name cases. For example, [in Gucci Am., Inc. v. Gucci, 2009 U.S. Dist. LEXIS 124888 (S.D.N.Y. Aug. 5, 2009)] a district court in the Southern District of New York recently found that defendants' name marks JENNIFER GUCCI and GEMMA GUCCI bore a "strong similarity" to plaintiff's GUCCI mark. In addition, the defendants used a typeface and pattern that were substantially similar to those used by plaintiff. Because of the "significant strength" of the GUCCI word and design marks, the court protected the plaintiff's marks even where the defendants' products did not directly compete with those of plaintiff.

     Though courts used to speak of a right to use one's own name in business, it is now clear that such a right, if it exists, must yield if there is a likelihood of consumer confusion. The fact that the infringing mark is a surname or nickname should not make the existence of likely confusion any more palatable. Nevertheless, courts remain reluctant to completely enjoin use of a personal name. Thus, they may find likelihood of confusion but still issue a narrow injunction.

(footnotes omitted)

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