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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:
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."
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
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.
Access the full version of Naming Rights -- and Wrongs A Road
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