99 Problems But Trademarking Your Name Ain’t One

As fans of musicians Beyonce and Jay-Z learned earlier this Summer, the entertainment power couple gave birth to twins named Rumi Carter and Sir Carter. However, not making nearly as many tabloid headlines was Beyonce’s (or, rather, her trademark holding company) subsequent application to the U.S. Patent and Trademark Office seeking to register both children’s names as actual trademarks. The applications claim use of both marks in commerce for 15 different classes of goods or services such as cosmetics, baby apparel, playing cards, and entertainment services. As of the time of this writing, both applications with the USPTO are currently pending examination.

Every so often I’m asked by someone if they can trademark their own name. The smart alecky answer I usually give is that one can always make an application seeking to register their own (or someone else’s) name, but whether or not the application will be granted is another story entirely and requires a lot more consideration. It is true that many famous athletes, entertainers, and public figures (including Queen Bey herself) have been able to successfully register their names with the USPTO as actual trademarks. However, for those of us lacking similar fame or notoriety, there are considerable practical and legal hurdles to federally registering your name as a trademark.

Here in America at least, trademark law requires a trademark to be in actual use in commerce in order to be registrable (although application based upon a bona fide intention to use a mark in commerce at some later date is possible). The problem with trying to apply for one’s name as a trademark is that, in ordered to be registrable, the name must be used as more than merely a personal identifier of the individual (which is the case for most of us) but rather a source identifier connected to the given goods or services associated with the name. To qualify for registration with the USPTO, even a well-known celebrity name must be used in connection with goods or services and not simply as a functional identifier of the celebrity him or herself.

In addition to demonstrating your name’s actual use in-commerce, a further showing of “secondary meaning” attached to it by the consuming public is required. Basically, under The Lanham Act (the set of U.S. laws that govern trademark registration and protection), if you are trying to register a mark that involves a surname (i.e., a last name), proof of secondary meaning will be required. In other words, a personal name can only be protected as a trademark if the owner can prove that through its use commercially, the name has acquired a certain distinctiveness or has become so well known that the general public now associates the personal name with the goods or services indicated in the trademark application. For all but the most famous among us, this is no small task.

Whether Beyonce will be able to achieve registration of baby Rumi and Sir’s names remains to be seen. Although Beyonce and “Hova” are contemporary music icons and enjoy instant name recognition in connection with their music, performances, etc., the same cannot really be said for either of the twins (at least not yet). And probably not at the level where proof of secondary meaning would not be required by the USPTO examiner.

Ben Bhandhusavee is the Managing Attorney for BhandLaw, a Phoenix business and technology law firm that works with start-up companies, complex business and technology transactions, and intellectual property matters. Ben can be reached at (602) 678-2970 or by e-mail at bbhand@bhandlaw.com