Entrepreneurs like lawyers, fashion designers, jewelry designers, photographers, interior designers, chefs, event planners, often use personal names as brand names for their business. As a solo entrepreneur or small business, you are your brand (my brand is my personal name). This week, I’ve had a few business owners ask me if personal names can be trademarked.
The short answer is yes. Of course, there are limitations and perimeters within which a personal name can be trademarked. Personal names (actual names and nicknames) can function as marks only if they identify and distinguish the services and not just the person; you can’t just trademark your name by itself. For example, TIGER WOODS cannot be trademarked merely to identify a famous professional golfer. He would need to show use of TIGER WOODS for some goods or services to identify and distinguish any goods sold or services rendered by him.
A personal name is registrable as a trademark if you can show that it is used in a way that tells people what you do in addition to telling them who you are. For example, JOHN HARDY is a personal name and a registered trademark for jewelry; TORY BURCH is a personal name and a registered trademark for, among other things, clothes, perfumes and retail store services; WOLFGANG PUCK is a personal name and a registered trademark for, among other things, restaurant services.
Speaking of chefs, there has been some litigation surrounding chefs’ use and trademark of personal names. Chefs often lack the financial resources to start their own restaurants. They partner with investors to help them open restaurants and showcase their talent. Many chefs use their personal name for their restaurants. But the trademark rights in those belong to the company providing financial backing. They sign contracts with restaurateurs assigning all legal rights in their name and persona in favor of the restaurateur. A name is considered an asset for a company. Monied partners will not allow a personal name trademark or any other trademark to be held by anyone other than the company itself.
When the chef wants to part ways with the partner, they often cannot take their personal names with them. Celebrity chef David Burke cannot use his personal name for his restaurant even after parting ways with his former partner, Jeffrey Citron. Citron continues to use and operate David Burke at Bloomingdale’s, David Burke Kitchen in New York City and other locations, even though David Burke is not a chef there and has no involvement with those restaurants.
So while there are some risks and boundaries concerning personal name trademarks, it is not impossible to register them.
At Nupur Shah Law, we help business owners and creative entrepreneurs with contracts and intellectual property rights. Call us at 646-820- 1366 or email us at email@example.com. I am happy to have a complimentary conversation with you on how to secure and/or defend your rights.