Lex Indicium

What’s In a Name?

February 12, 2018


Question: What do Sean Combs, J.K. Rowling, LeBron James, Lionel Messi, and Mark Wahlberg have in common? Two things, actually. First, they are all listed on the Forbes 2017 Celebrity 100 List; second, they all have gone to the trouble of registering their personal names as trademarks with the U.S Trademark Office. Indeed, of the first 20 celebrities on this “A” list, 19 have sought registration of their names as trademarks.

Trademark Protections For Personal Names

Under Federal law, everyone is entitled to seek protection of his or her name as a brand. The Lanham Act expressly provides that:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.

As indicated by the language of the statute, in addition to names, likenesses (portraits) and signatures of individuals are entitled to trademark registration. Several well-known entertainers have taken advantage of this right, including Meryl Streep, Robert De Niro, and Anthony Hopkins (who has registered his signature and his name), Rob Gronkowski (who registered “Gronk”), Paul Newman (registrations for his likeness and his name), Mary J. Blige, Morgan Freeman, Howard Stern, Ellen DeGeneres, Donald Trump, Kate Upton (including a registration for her signature), and Chase Elliott (including a registration for his signature). There is even a posthumous registration for Humphrey Bogart’s signature and profile.

It’s not surprising that the law grants a monopoly to use one’s own name in connection with one’s business activities. In fact, intuitively, one would assume a certain exclusivity in one’s own name. But protection for personal names is not absolute. In order to be entitled to register a personal name, the law generally requires that the name has gathered “secondary meaning.” That is, only those people whose names have come to signify more than their personal identity are entitled to register their names as trademarks. The rationale for this requirement is that the law is reluctant to preclude others from using their own names unless doing so is required to avoid confusion in the marketplace. This allows for the practical reality that many of us share our personal names with otherwise famous people. So, if your name is Marlon Brando, you might not be able to use it to sell t-shirts of the famed actor, as people could assume that the actor (or his estate or licensee) is responsible for that merchandise. However, you might be able to have a diner named “Marlon’s,” so long as you don’t insinuate to your customers that it’s Brando’s hang-out or preferred cuisine.

What’s the Purpose of Registering Famous Names?

Perhaps the most obvious reason to register is to monetize the name via licensing revenues. However, the second most obvious reason is simply to protect the name and its value from potential squatters and fraudsters. In particular, having a registration can assist in challenging domain names and other abuses.

Domain Name Protections Afforded to Personal Names

The Lanham Act includes provisions that allow owners of marks composed of personal names to challenge “bad faith” domain name registrations comprising those names. Hence, celebrities have a statutory avenue to challenge domain name squatters and/or fan and “gripe” sites that comprise celebrity names if the domain name is registered and used in bad faith. Similar relief can be obtained through arbitration proceedings, referred to as Uniform Domain Name Dispute Resolution proceedings.

Importantly, while bad faith can take a variety of forms, decisions on such challenges have generally found that merely using a celebrity name as a domain name for a “fan site,” or even a celebrity gripe site, may be an act of good faith (and not punishable), so long as it is clear that the site is not associated with or authorized by the celebrity. On the other hand, publishing defamatory content about a celebrity or attempting to sell the domain name to the celebrity are textbook examples of bad faith, warranting return of the domain name to the celebrity.

Importantly, while a trademark registration is not necessary to take advantage of these rights to challenge domain name registrations by squatters and fans, having one makes the process infinitely easier. That is because in the absence of a registration, the law doesn’t presume that your name has acquired any special significance, or “secondary meaning,” as discussed above. Accordingly, the complainant would have to prove secondary meaning as part of their case—something that would be afforded to the complainant automatically if he/she had a registration.

While trademark rights are, therefore, a potentially powerful asset in enforcing celebrity rights, it’s notable, as the world turns its attention to the Oscars ceremony, that with few exceptions, this year’s Oscar nominees have not registered their own names. Only Meryl Streep and Mary J. Blige have registrations or applications pending. It will be interesting to see whether Gary Oldman, Frances McDormand, or Daniel Day-Lewis become more interested in trademark protections if their stars rise further this year.

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