What’s in a name, inquired the Immortal Bard, speaking through Ms. Capulet. Well, for one thing, sometimes there is a very valuable trademark, whether its intended use be to sell merchandise, BLUE IVY for cosmetics, clothing, toys, etc., or to advance a cause, JUSTICE FOR TRAYVON, or to offer a service, DEAR ABBY, or to invest in and await the judgment of history, OJ SIMPSON.
The right to use your own name in your business is sacrosanct, unless a namesake beats you to the punch or you sold it. If your last name is Ford, don’t start building automobiles and putting your name on them. If your last name is Taylor and you sold your vineyards to Coca-Cola, don’t return to squeezing grapes and putting the fermented juice in bottles labeled TAYLOR.
And if your parents name you “Blue Ivy” and want to register your name as a trademark, you’ll run afoul of the BLUE IVY store in Sturgeon Bay, WI. (Girl babies named “Mary” rarely have this problem.)
The rightful—but as we have just seen, even a birthright may not make you “rightful”—owner of a name has several grounds to prevent the use or registration of an offending appellation by someone else. First, of course, there’s infringement, or likelihood of confusion, which applies in all cases involving use or registration where two marks are identical or confusingly similar. Then, and again applicable to both use and registration, there’s “dilution,” where no one is going to be confused, but the later user’s use “tarnishes” the original user’s image or “blurs” the distinctiveness of a famous mark. Like infringement, dilution applies to all marks whether or not derived from someone’s name.
Finally, there’s protection for a celebrity’s name even if the celebrity is selling only herself (as opposed to merchandise). The Federal Trademark Act affords a statutory bar to registration of any applied-for name that raises “a false suggestion of connection” with any person living or dead (“person” includes corporations, but that’s for another bulletin). The bar applies whether or not the famous owner had the foresight to register her name as a trademark prior to her death (or, in baby Blue Ivy’s rare case, prior to her birth). While historical fame can be everlasting, fame for trademark purposes erodes with time. The longer a famous owner has been dead, the lower the bar to the use of her name:
ELIZABETH TAYLOR—definitely off limits
AGATHA CHRISTIE—probably still off limits
CLEOPATRA (for reptile-proof fruit baskets?)—OK.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
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Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.