What is a Trademark?
A trademark is a name, logo, slogan, sound, or even a motion that when used in conjunction with a good or service, identifies the source of that good (the owner) and distinguishes it from competitors. In order for a trademark to be trademarkable, it must be sufficiently “distinct” vis-à-vis the goods that are being sold AND it cannot already be taken by another applicant.
What is a distinct trademark? Trademarks are considered distinct when the trademark does not in any meaningful or readily identifiable way identify the goods/services being sold under the trademark. For example, Google is a very strong and distinct trademark because the no one had any inclination to identify Search Engines with the word Google until Google came along to make that pairing possible.
What if someone is already using your desired trademark? Well, that does not necessarily matter. What counts is if someone is already using your trademark in connection with a sufficiently similar set of goods and services. Thus, a startup company that sells lumber may very well be able to obtain a trademark on the name “APPLE”, despite the fact that Apple Inc. already has a trademark on that name because lumber is an entirely different type of good than Iphones.
Can I Use My Name as a Trademark?
Perhaps one of the most common questions our trademark attorneys are asked is whether or not I can use my name as a trademark. This is of course not particularly surprising – entrepreneurs and small business owners very often want to brand their businesses with their own names to make the company feel more personal and in a certain way, intimate. Who doesn’t feel at home at Bob’s Burger Joint?
Unfortunately, trademark law does not prima facie favor trademarks that are name oriented; this is certainly the case when names that are “primarily merely a surname”. Indeed, trademark law will only confer trademarks on surnames when those surnames have “acquired distinctiveness”, or sufficient familiarity in the public domain. How do you know if a surname has in fact acquired distinctiveness?
Before considering the 5-factor test, there is undoubtedly an element of, you know it when you see it, to this calculus. Consider for the moment the Kardashian name – does anyone doubt that this name has acquired distinctiveness? Absolutely not. When you hear the name Kardashian, you know exactly who it is referring to and more importantly, what the name means in a branding and commercial capacity. “Kardashian” is the archetype example of a surname that as acquired distinctiveness.
If we seek to translate the you know it when you see it standard into composite parts, we may consider the following five factors which when taken in their totality, establish whether acquired distinctiveness has been achieved:
- The relative commonality of the surname;
- The extent to which the term is the surname of an individual connected with the trademark’s application;
- The extent to which the term is recognizable in a capacity other than as a surname
- The extent to which the term seems like a surname;
- The extent to which the aesthetic stylization of the lettering sufficiently distinguishes the term so as to create a separate commercial impression
These factors seek to get to the more fundamental question of whether or not the primary impression of the desired trademark is that of merely a surname; if the answer is yes, the applicant must show acquired distinctiveness.
Can My Personal Name be Trademarked?
Somewhat counter intuitively, personal names, whereby first names are used in conjunction with last names for the purposes of the trademark, do not need to demonstrate acquired distinctiveness to rise to the level of a trademark because trademark law views personal names as being prima facie, distinct. Critically, please remember that merely possessing a trademarkable name is not enough – you must also use your personal name in commerce in connection with a specific good or service. Tony Robbins, the immensely popular and indeed powerful motivational speaker has trademarked, “TONY ROBBINS”, and assigned it to CLASS 041 for “educational services, namely, conducting classes and seminars in the fields of personal improvement, financial improvement and sales training.”
How Do I protect My Trademarked Name?
In order to obtain federal trademark protection, you must file a trademark application with the United States Patent and Trademark Office (USPTO). Naturally, the USPTO has fairly strict requirements as to the type of information it requires in the trademark application but in sum, you will need to provide the following;
- The contact information of the applicant
- The legal status of the applicant (a person or business entity)
- The nature of the trademark (is it a word, design, slogan, or sound/motion trademark)
- The description of the Trademark
- The class of goods/services to which the Trademark will be assigned
- A description of the goods/services
- A specimen showing use of the goods/services in commerce
- A statement of first use of the trademark, both generally, and in commerce
- An indication that the Application is an Intent-to-Use if the mark has not yet been used in commerce
Once the trademark application has been completed, you will need to submit a government filing fee of either $275 or $225 per class of good. Then, you can reasonably expect to hear back from the USPTO within 3-5 months with either a confirmation that the trademark is acceptable or with a Trademark Office Action, which will explain why the trademark is unacceptable and what you will need to do to fix it.
Speak with a Trademark Attorney
Your name is absolutely everthing. Protect it. Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your case.
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