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03 October 2023
This article is written by Wiebeke De Wachter.
Registering a first and/or last name as a trademark might be a strategic move for individuals, businesses, or creative professionals seeking to protect their personal brand. While registering common names as a trademark can be challenging, it is not completely impossible. The luxury industry provides us with well-known examples such as Louis Vuitton, Porsche, Dior, Céline and so on. In this article, we will explore the intricacies of registering your first name and/or last name as a trademark.
Trademarks: distinctive, non-descriptive and available
A trademark provides exclusive rights to the trademark holder to use a specific word, symbol, logo, or even a slogan in connection with specific goods or services. A trademark helps to distinguish your products or services from those belonging to competitors. Furthermore, a trademark builds brand recognition, and helps to protect a brand's reputation.
Obviously, not every sign qualifies as a trademark. To qualify as a trademark, a sign cannot be descriptive of the goods and services it is covering. For example, 'Apple' is a perfect sign to be a trademark for technology products and software, but not for fruit. Furthermore, a trademark must be distinctive, meaning it should be capable of identifying the economic source of the goods or services. A common saying, one single number or only one letter for example, will probably lack distinctiveness and will subsequently be rejected as a trademark by the national trademark offices. On top of the above, a trademark should be available in the territory where protection is desired. Using a trademark that is already in use or registered by another party, can lead to legal issues and potential infringement claims.
Personal names as trademarks
There are plenty of examples of registered trademarks that consist of a first name, last name or even both. However, these trademarks must always be available in the region where protection is sought, and their distinctiveness will be assessed on a case-by-case basis.
To register your first name as a trademark, it should ideally be unique and not too common. Common names are more challenging to register as a trademark because they could possibly lack distinctiveness. However, should your first name be very common in relation to the goods and/or services you sell, it can still be registered as a trademark if it has acquired distinctiveness through extensive use. This usually requires a significant history of use and a strong market presence. In any case, a very common first name can always be protected through a device mark, or logo, that incorporates distinctive elements.
Last names do, in principle, have a higher intrinsic value as being an indicator of the origin of goods or services than first names. However, there are some additional challenges to registering a last name as a trademark, especially if it is identical to a geographical place name (e.g., Crawford) or a descriptive term (e.g., Cook) related to the goods or services you are offering. Nevertheless, it is still possible to register even these "problematic" last names if they have acquired distinctiveness through intensive use or if they are applied for as a device mark with distinctive elements.
Unsurprisingly, a full name is generally more distinctive as a trademark than just a first or last name. On top of that, full names are more likely to be available, as there is a smaller chance that they are already in use by another company selling the same goods or services. However, keep in mind that a successful brand can be sold one day, so consider whether you would want to sell your name rights. A safer and more creative option could be to create a fantasy name with a subtle link to your personal name. For example, "HARIBO®" is an abbreviation of its founder Hans Richter, who lived in Bonn, Germany.
Lately, even many celebrities tend to protect their name through a trademark. Kylie Jenner®, Taylor Swift®, Oprah Winfrey®, Beyoncé® are some examples that have been registered as a trademark. However, it is important to note that celebrities can register their names as trademarks only if there is a commercial or economic rationale behind it, and not merely to arbitrarily block others from entering the market with the same or a similar trademark. Furthermore, trademark legislation in most jurisdictions requires genuine use of a trademark within a specified period, and the absence of such genuine use may lead to the loss of rights.
When should I register my trademark?
In case your personal name will be used as a trademark in an economic context, it is highly recommended to proceed with an application for a trademark registration immediately. Performing an availability search before filing your trademark is always a bright approach as it can help you identify any potential conflicts with earlier trademarks for identical or similar goods and services.
In China, for example, it is very important to register a trademark immediately. Many trademarks in China are filed in bad faith, and Chinese trademark law does not always provide adequate legal instruments to combat them. This has been the case with fashion designer Dries Van Noten who was denied the use and registration of his trademark, which includes his own name, because it had been filed in bad faith by another party. As stated above, this unfortunately still is a very common occurrence in China and a good reason to seek professional legal assistance for trademark matters.
Can I use my personal name without a registration?
From a Belgian perspective, a personal name can be used in economic activities even though someone would have registered the same name as a trademark. What is known as “informative trademark use” is defined in both Benelux (Art. 2.23.1a BCIP) and EU (Art. 14 EUTMR) legislation. Such use must be made in accordance with honest practices in industrial or commercial matters and should not suggest any economic link between the user and the trademark owner. This loyalty obligation protects the economic investments of earlier trademark holders by preventing that someone else takes unfair advantage of these investments. It is important to note that the laws vary from country to country, and that, at least in some countries, you may not be able to use your personal name as a trademark without registering it.
Additionally, a trademark is not the same as a trade or company name. A trade or company name may include the owner's personal name. According to Belgian law and practice, trade names receive protection through use. Conflicts between similar earlier and later trade names are resolved in court, based on several factors, including the general rule of "first-come, first-served" in a specific sector and region.
A personal name can thus be used without a trademark registration. However, if you are not the first with the same name in a similar sector, legal problems may arise. The earlier trademark holder may have the right to prevent you from using the name commercially if it is likely to cause confusion about the origin of your goods or services. Additionally, without a registered trademark, you cannot prevent third parties from using similar names for similar goods or services. In this sense, a registered trademark offers more protection.
Registering your first name and/or last name as trademark is a strategic step that can provide numerous benefits, including brand protection and enhanced credibility. While it may be more challenging for individuals with common names, it is possible to secure trademark rights for your name and safeguard your personal or business brand with the right approach, legal guidance, and a comprehensive availability search.
We encourage you to reach out to us on firstname.lastname@example.org if you have any questions or concerns about how this will affect the handling of your current or future patent applications. Our DCP team is ready to assist you!