Can I Trademark My Name?
Celebrities including 50 Cent, Jennifer “JWoww” Farley (from Jersey Shore) and Madonna have all secured trademarks in their names. The ability of a person to trademark their name depends on use of the mark and whether the mark has acquired “distinctiveness.” If you are involved in the world of entertainment, plan to use your name in commerce and your name has developed a “secondary meaning” (distinctiveness) to consumers of your brand, then you may be able to trademark your name.
Federal “Use in Commerce” Requirement
Federal Trademark law originates from the Commerce Clause of the United States Constitution. This differs from patent and trademark protection, which emanates from the Intellectual Property Clause of the United States Constitution with an aim to “promote the progress of science and the useful arts” by giving artists and inventors the exclusive rights in their work for a limited period of time. Trademarks, in contrast to patents and copyrights, do not promote science or the arts, but instead serve to regulate commerce. Congress’ goal for trademark protection was to function as a quality control to help consumers make confident purchases and avoid confusion in the marketplace. If others were allowed to copy or imitate another company’s mark, then consumers would have less confidence in their purchases, ultimately causing harm to the economy.
Since trademarks serve as quality control for consumer purchases, a mark’s use or intended use in commerce is a critical aspect for federal protection. Without use of the mark in commerce, such as interstate commerce (between two states) or between a U.S. state and a foreign country, no federal trademark rights can be established. Plans to use your name online to sell goods or services will satisfy the “use in commerce” requirement. A Federal trademark will generally not be available if you only plan to use your name within the State of California (and not between states). However, you may be able to qualify for state Common Law trademark protection as described below.
Not only must a name be used in commerce to qualify for federal trademark protection, but it also must meet distinctiveness requirements in relation to the goods and services for which the name will serve as a mark. Federal trademarks follow a spectrum of distinctiveness from fanciful/coined marks, to arbitrary, suggestive, descriptive and finally generic marks. While names fall under the descriptive category, surnames generally do not receive trademark protection because they are not deemed to be inherently distinct. When registering a name (i.e. Kardashian), the holder must show in their application to the United States Patent and Trademark Office that their mark has “acquired distinctiveness.” Acquired distinctiveness is subsequently proven by showing that the name mark has acquired a “secondary meaning.”
California State Trademark
California also offers Common Law Trademark protection for marks used in commerce but not afforded federal protection. California trademark registration is typically faster and less expensive to obtain than a comparable federal registration. California trademarks are filed with the California Secretary of State. The application must include an example of the mark itself in addition to specifying the goods and services with which the mark is used. In addition, 3 original specimens and the accompanying filing fee are required.
The most important benefit to applicants in California is that, once submitted to the state trademark databank, other potential applicants are placed on notice of the mark. This presumes that the applicant in California is using the mark and qualifies for trademark protection.
However, state trademark registration only offers protection within California. In addition, the mark must actually be in use before a California application may be filed and approved. If approved, a “certificate of registration” is awarded for a five-year term.
Benefits of Federal and California State Trademark Protection
Filing for federal or California state trademark protection can shield your ownership claim from infringement while also providing additional equity in your brand. Proper branding allows customers to find and recognize your products, as distinguished from competitors and knock-offs. You can find further information on how a trademark can protect your brand in our past article: here.
If you are considering filing a trademark for your name, contact our office or a local attorney to see if you qualify for state or federal protection.
 David R. Gerk and John M. Fleming, New Practitioners Guide to Intellectual Property, § 3, Part I (2012).
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