Choosing a name is no easy feat. In fashion, your greatest asset is your brand name and the trademark rights to it. In an industry built on name recognition, it seems customary to select your personal name (or a portion thereof) as the name for your brand. However, you should consider the legal obstacles to protecting your personal name as a trademark before defaulting to this industry custom.
Can I trademark my surname?
It is possible to register your surname (last name) as a trademark (or “mark”) for your brand—look at Gucci, Fendi, Chanel, and many more. However, you cannot register your surname on the basis that it belongs to you and you want to prevent others from using it.
U.S. trademark law recognizes that many people share the same last name. Thus, it is important to keep surnames available for potential applicants who desire to utilize their name in business—applicants like you.
With this in mind, you can register your surname as a trademark with the United States Patent and Trademark Office (USPTO) provided your mark survives a two-part inquiry: whether the mark is “primarily merely a surname” and whether the mark has acquired distinctiveness?
Primarily Merely a Surname
Whether a mark is primarily merely a surname (say that ten times fast), depends on the mark’s primary significance to the public. Is it simply a surname or does it identify the source of a good or service?
The answer to this question rests on several factors:
- The rarity of the surname;
- Whether the term has any recognized meaning other than as a surname;
- Whether anyone connected to the applicant has that surname; and
- Whether the mark has the “look and feel” of a surname or is stylized in a manner that creates a separate commercial impression.
If the mark’s primary significance is just a surname, then you must prove the mark has acquired distinctiveness. Otherwise, it cannot receive federal protection as a trademark.
A mark has acquired distinctiveness when consumers recognize the mark as a source identifier of a particular good or service.
For example, Prada owns several registered trademarks for the word mark, “PRADA,” which is the surname of the brand’s founder, Mario Prada. When consumers see the mark, “PRADA,” they immediately think of the producer of luxury handbags, shoes, clothing, and other fashion-related products and not merely a surname.
Sometimes “rare” surnames may function as protected trademarks without having to prove acquired distinctiveness. But for those of you with common last names, you can demonstrate acquired distinctiveness either through proof of prior trademark registrations or continuous and exclusive use of the mark in commerce for five years prior to a claim of distinctiveness. Another form of proof is actual evidence of acquired distinctiveness, for example, advertising or consumer statements indicating recognition of your mark as a trademark.
If you fail to sufficiently prove acquired distinctiveness, your application is rejected and the application fee is non-refundable—base fees range from $275 to $400 (ouch!).
Alternative ways to incorporate your surname
There are other ways to incorporate your surname that increase the chances of successful registration (this list is not exhaustive):
1. Apply first to the Supplemental Register – This junior register of the USPTO is good for new marks, used in commerce for less than five years, that need time to become distinctive before applying to the Principal Register.
2. Add your initials to your surname – A mark that consists of two or more initials preceding a surname is perceived as a personal name, and not primarily merely a surname. For example, L.L. Bean refers to the brand’s founder, Leon Leonwood Bean.
3. Combine your surname with other wording – The additional wording must have a source-identifying function—either inherently distinctive or have acquired distinctiveness.
Can I trademark my full name or given name?
You may trademark your full name or given name (first name) as your fashion brand as well.
When seeking federal registration of a personal name other than “primarily merely a surname,” there is no requirement to show acquired distinctiveness if the public perceives the personal name as a source identifier. Similar to the rules for surnames, if the public views your mark as a personal name, then you must provide proof of acquired distinctiveness (see above).
Even if you sufficiently prove acquired distinctiveness for any personal name (surname, given name, or combination of both), keep in mind that you must still overcome other registration requirements such as use in commerce, no likelihood of confusion with a pre-existing mark, not merely descriptive, etc.
Now that you know how to protect your personal name as the name of your brand, the next question you should consider is whether using your personal name is a good business decision.
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