The Name Game

There is an often misunderstood element of trademark law that is oversimplified to: You can’t trademark your name.  This comes from the Trademark Manual of Examining Procedure, or TMEP 1301.02(b)  Names of Characters or Personal Names as Service Marks

Under 15 U.S.C. §1127, a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character.  If the name or design is used only to identify the character, it is not registrable as a service mark.  

People seem intent on simplifying this and reading the first part: “a name or design of a character does not function as a service mark…” and then last part, “If the name or design is used only to identify the character, it is not registrable as a service mark.” And completely skipping the middle: unless it identifies and distinguishes services in addition to identifying the character.  And therein is the key:  simply being a name, even a famous one, is not enough.

For example, in In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) it was determined that the name of golfer Lee Trevino identified exactly what you might expect – a golfer named Lee Trevino.  As no other services or goods were associated with the name, it could not be registered.

But when the name means more, registration is allowed. The trademark registration database is filled with famous names that represent more than the mere people that carry them on their driver’s license. There are several FRANK SINATRA registrations for everything from entertainment services (as you would expect) to spaghetti sauce.  And the list of ELVIS related marks goes for pages.

So the adage, “you can’t trademark your name” is both true and incomplete. It might be better presented as, “you can’t trademark your name for being a name.”

There is further guidance in TMEP 1202.09(a)   Names and Pseudonyms of Authors and Performing Artists

Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist….

As with TMEP 1301.02(b), the name as a name is not registrable.  But take note of the distinction in TMEP 1202.09(b)   Names of Artists Used on Original Works of Art

An artist’s name or pseudonym affixed to an original work of art may be registered on the Principal Register without a showing that the name identifies a series.

Again, the question is does the name represent a person, or is it used to designate something about the goods or services or their origin.  The name, as a badge carried by a work of art representing its origin becomes registrable.

The USPTO has an excellent web page on this topic: http://www.uspto.gov/learning-and-resources/ip-policy/musicians-and-artists-profile

As to the recent news about artist Rihanna and her efforts to trademark her real first name ROBIN being opposed by D.C. Comics for being too similar Batman’s sidekick’s name ROBYN, the issues of that matter have little to do with a person’s name acting as a trademark.  For many people it was news that ROBIN was Rihanna’s real first name. (If a name is not used to identify someone then it is not subject to a TMEP 1301.02(b) rejection.)

The ROBIN – ROBYN conflicts are purely based on classic confusion, namely, will people be confused and think Rihanna associated goods and services sold under the ROBIN brand name will be somehow affiliated with Batman’s sidekick the Boy Wonder ROBYN.  Of course this all goes away in the movie deal when Rihanna signs on to play the actual Robyn in the next movie.  Stay tuned.

The ROBIN – ROBYN opposition filed by D.C. Comics may be viewed here: ttab-91221868_ROBYN-ROBIN_Opp

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