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Fashion Law Blog An Interactive Discussion on the Business of Fashion

Fashion Law 101: Using Your Name as a Trademark

Posted in Fashion Intellectual Property

This guest post is authored by Lindette Hassan.  Lindette is an Associate in Fox’s Intellectual Property Practice.  She can be reached at lhassan@foxrothschild.com or 610.397.6518.

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In fashion, designers strive to put their individual stamp on their designs. This ambition extends to the choosing a brand name for a store or fashion line, sometimes by using the name of the designer as the brand name or trademark. However, from a trademark perspective, this is not always the best way to go.

Trademarks that are “primarily a surname” cannot be protected under U.S. Trademark Law without proof that the surname has “acquired distinctiveness. A mark is considered to be “primarily a surname” if the primary impression of the consumer is that the mark is a surname, not a trademark. However, if a surname becomes well known as associated with a specific business, product, and/or service, that surname has “acquired distinctiveness” and can be protected as a trademark. Such marks include MCDONALDS and FORD.

Note, not all surnames fall into the “primarily a surname” category. Factors used to determine if a mark is “primarily a surname” include:

1. Whether a surname is rare;
2. Whether there is anyone using the surname who is connected with the person who wants to protect it as a trademark;
3. Whether the surname has a meaning other than as a surname; and
4. Whether the surname has the look and feel of a surname.

While it may seem silly to not have trademark protection in your own surname, just think of the people with the same surname who will lose protection if one person is granted protection in a certain surname. This rule addresses the reality that many people have the same surname. Since U.S. Trademark Law is designed to protect consumers from being confused or deceived by the use of a particular trademark, individuals and businesses are required to use marks that are different from marks used by other individuals or businesses for the same goods or services. As such, everyone cannot claim rights in the same surname simply because it is their actual surname — a person or business must “acquire distinctiveness” in a surname before gaining trademark protection.

At the end of the day, unless a surname is rare, it is best to steer clear of using it as a new trademark. As discussed in a previous post, when picking a name for a new fashion line, the best bet is to pick a name that is either (A) a made up word (fanciful mark), (B) a random word (arbitrary mark), or (C) a word that suggests a characteristic of the fashion line (suggestive mark).