Recent Decision Allowing Federal Registration of Celebrities’ Names Provides Additional Protection
- United States
- 12/11/2007
- Arent Fox PLLC
The U.S. Trademark Trial and Appeal Board (TTAB) recently reaffirmed that an applicant may register their own name as a trademark if the applicant’s name has acquired secondary meaning and identifies the goods of a particular person from the goods of others. In re J.J. Yeley, 2007 WL 3095396, at *7-8 (T.T.A.B. Oct. 17, 2007). The Lanham Act forbids the registration of a mark that is “primarily merely a surname.” 15 U.S.C. § 1502(e)(4). The policy behind this prohibition is that personal names are categorized as descriptive on the spectrum of distinctiveness and may only be registered if they have acquired secondary meaning. To determine whether a name is primarily merely a surname, the impact of the mark on consumers must be examined. If the primary significance of the mark on the purchasing public is that it is a surname, then registration must be refused. If the primary significance of the mark on the purchasing public is that it identifies a particular good or service as being associated with a particular person, then the mark is a personal name that has acquired secondary meaning and may be registered. Yeley, 2007 WL 3095396, at *7-8; In reThermoLabsystems, Inc., 2007 WL 809858, at *1 (T.T.A.B. Mar. 15, 2007).
In Yeley, J.J. Yeley, a well-known NASCAR race driver, applied for registration of the mark J.J. YELEY. The examining attorney initially refused registration of the mark J.J. YELEY on the basis that it was primarily merely a surname. In response, Yeley amended the application to include evidence of secondary meaning and requested registration under Section 2(f) of the Lanham Act. Such evidence included the number of races in which he had participated, the amount of television coverage he had received, the number of spectators in attendance at NASCAR races, and the number of television viewers for NASCAR events. The examining attorney held this evidence insufficient to support a claim of secondary meaning under 2(f). On appeal, the TTAB reversed the refusal after finding that consumers, when presented with the mark, would associate the goods or services with J.J. Yeley, a well-known NASCAR race driver. The TTAB examined the evidence of secondary meaning and found that the mark was a personal name that had acquired secondary meaning rather than primarily merely a surname. The evidence had demonstrated that NASCAR racing is “one of the most popular spectator sports in the United States” and “many of its participating drivers have become well-known personalities to fans.” Yeley, 2007 WL 3095396, at *6.
The owners of the estate of a well-known or famous individual may also register a personal name as a trademark. In Michael S. Sachs, Inc. v. Cordon Art B.V., the TTAB allowed the owner of the estate of a well-known Dutch artist, M.C. Escher, to register the mark M.C. ESCHER. The applicant applied for a U.S. registration based on a Benelux registration, but the application was opposed on the basis that it was primarily merely a surname. 56 U.S.P.Q. 2d 1132, 1136 (T.T.A.B. 2000). The TTAB allowed the registration because the mark was a personal name that identified a “specific person of considerable renown” and was not primarily merely a surname. Id.
Opponents to registration in Yeley and Michael S. argued that the Federal Circuit and the TTAB had held in previous cases that the addition of a person’s initials to a surname automatically reinforces, rather than diminishes, the surname significance of the term because the initials are insufficient to transform a descriptive mark into one that is inherently distinct. The TTAB in Yeley distinguished these prior cases by stating that the applicants in prior cases had offered no evidence that the surname had acquired secondary meaning, and that “there is no per se rule that the addition of an initial(s) to a surname means that the mark is automatically primarily merely a surname.” Yeley, 2007 WL 3095399, at *11.
Under the current procedures at the U.S. Patent and Trademark Office (PTO), a person may only register their name or the name of another individual after written consent to registration is submitted to the PTO 15 U.S.C. § 1502©. The examining attorney has the initial burden of proving that a name is primarily merely a surname. If the examining attorney offers sufficient proof that the mark is primarily merely a surname, the applicant must then offer proof that the mark has acquired secondary meaning under 15 U.S.C. § 1502(f). Examples of such proof might include the number of television or film appearances, the popularity of the applicant’s television shows or films, the amount of coverage in print media, or the number of fans. Many well-known individuals and celebrities, or their estates, have registered their name as trademarks with the PTO. These individuals, including Britney Spears, Paris Hilton, Elvis Presley, Muhammad Ali, Donald Trump, and Celine Dion, were able to register their names without offering proof of secondary meaning.
