Often clients inquire as to whether personal names can be used as trademarks. The answer to this question is that it depends. There is no absolute right to use your own name as a trademark, but it is possible to do so under certain circumstances. In fact, many of the most well-known and valuable trademarks stem from personal names. This question will be answered first in connection with a "surname". Under U.S. trademark law, a Mark that is "primarily merely a surname" cannot be protected without proof that it has "acquired distinctiveness". Generally, five factors will be considered to determine if acquired distinctiveness must be shown:
(1)Whether the surname is rare;
(2)Whether the term is the surname of anyone connected with the applicant;
(3)Whether the term has any recognized meaning other than as a surname;
(4)Whether it has the "look and feel" of a surname; and
(5)Whether the stylization of lettering is distinctive enough to create a separate commercial impression.
Essentially, if the purchasing public's primary impression when encountering the Mark is that of a surname, and not a trademark, acquired distinctiveness will have to be proven. Unlike surnames, personal names (first names and first names used with last names) can act as trademarks without proof of secondary meaning because they are considered to be inherently distinctive. In addition, if you add two initials to a surname, it is probable that the commercial impression that will be conveyed by the Mark will be that of a personal name and not a surname. In the famous case of In re P.J. Fitzpatrick, Inc 95 U.S.P.Q.2d 1412 (TTAB 2010), the Trademark Trial and Appeal Board reversed a refusal to register the mark P.J. Fitzpatrick Inc. The Board held that the initials within the mark was enough to avoid the finding that the mark was “primarily merely a surname”. This is good news for those of us who are looking for a way to use their surname as a trademark. The only caveat is that the personal name must be used in a manner that is perceived by purchasers as identifying the source of the goods and/or services.
In summary, if the name is considered primarily a surname then acquired distinctiveness must be proved. If the name is a personal name you may use it a trademark, as long as a namesake does not beat you to the punch, meaning that your proposed personal name would not cause a likelihood of confusion with a similar name already in use for related goods or services. Lastly, we must mention that Federal Trademark Law affords protection for a celebrity's name even if the celebrity is selling only himself or herself and not goods or merchandise. This is a restriction that will apply if your name/trademark would raise "a false suggestion of connection" with any person (including a corporation or institution) living or dead. This bar applies whether or not the celebrity has registered his or her name as a trademark prior to their death. To successfully show a false connection, one must show four elements: (1) the Mark sought to be registered must be a close approximation to another's name or identity; (2) the applicant's Mark must be recognized as uniquely pointing to that other person; (3) the other person must not be connected with the applicant's goods or services; and (4) the other's name or likeness must be sufficiently famous that a connection between them and the applicant would be presumed by the purchaser. All that being said, it is possible to use your name as a trademark under certain circumstances.