By Brian Downey, Barnes & Thornburg LLP
The notion that someone else could stop you from using your own personal name or surname in business seems absurd. After all, your name was given to you. It’s who you are and yours to do with as you please, right? Well, maybe not. If your last name is Kraft and you want to sell cheese, or your last name is McDonald and you want to open up a burger stand, you could be out of luck.
In fact, courts have routinely enjoined, or severely restricted, people from using their own name as a trademark in business. Not surprisingly, many of these cases arise out of family disputes: some where a family member who was involved in the business wants to open their own shop, and others where greedy family members simply want to ride on the coattails of a well-known family name. The issue also routinely arises when a business using a surname as a trademark is sold and then the seller decides to open up a competing business, again using their family name.
Regardless of how the cases arise, courts will focus on whether or not use of the surname creates a likelihood of confusion among consumers. While the test has many factors, the bottom line is that if consumers are likely to believe that the junior user of the surname is affiliated with, or authorized by, the senior user, a likelihood of confusion will be found and use of the name will be severely restricted, or in some cases, banned altogether.
Generally, trademark law considers surnames to be “merely descriptive” and incapable of protection absent a showing that the name acquired secondary meaning. In a nutshell, secondary meaning arises when consumers associate the name with the source of a specific product or service, rather than simply viewing it as someone’s name (e.g. Ford for cars or modeling agency services, DuPont for chemicals, Campbell’s for soup, etc.).
Of course, once a name has secondary meaning that provides powerful incentive to others with the same name to latch onto its recognition for their own purposes. Courts often factor this motive into whether or not use of the name will be restricted or banned altogether.
For example, Gemma and Jennifer Gucci, Guccio Gucci’s great-granddaughter and her mother, licensed the use of their full names in connection with a wide range of products, including housewares, cosmetics, coffee, wine and handbags. When Gucci brought suit, the court noted that neither Gemma nor Jennifer had any “reputation, skill or knowledge” as a designer of any of those products. As such, the court viewed their business enterprise as an attempt to cause confusion and trade off of the Gucci name. The court did leave open the future possibility for Jennifer and Gemma to use their names in the business under severely restricted circumstances – on products they designed, only with a full disclaimer, and only after obtaining a federal trademark registration of the name, which would be very unlikely and strenuously opposed by Gucci.
In another well-known case, Joseph Gallo, the younger brother of Ernest and Julio Gallo, began the Gallo Cattle Company, which sold cheese to commercial distributors. When Joseph began to sell the cheese in smaller, retail-sized packages branded with Joseph Gallo and the Gallo Cattle Company trademarks, E & J Gallo took action. As cheese pairs perfectly with wine, and as E & J Gallo had itself licensed the Gallo mark for use on salami, a likelihood of confusion existed. In the end, the court severely restricted Joseph’s right to use his name as a trademark (his signature could appear on the labels if limited in size and accompanied by a trademark that did not contain “Gallo”).
In yet another example of what many would consider a bizarre outcome, due to prior written agreements among the band, J. Geils was unable to stop The J. Geils Band from using that name, despite the fact that he no longer was a member of the group. Indeed, in the agreements, J. Geils had even given up the right to himself perform under the name “J. Geils” (he would have to use “John Geils” or another name).
Contrary to popular belief, the right to use your own name as a trademark in connection with your business is not absolute. If your use is likely to cause confusion with an existing senior user of a similar name, you could find yourself in court. When running a business under the family name, clearly spelled out succession planning as to who will have rights in the name is always key and necessary to avoid future family squabbles.
On the other side of the coin, when purchasing a business utilizing a surname as a trademark, always do due diligence on the family tree to see what types of issues you could be facing with rogue relatives in the future, and always be certain to spell out in the agreements exactly what use, if any, the sellers can make of their own name in future business endeavors.
Barnes & Thornburg LLP is a large, full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business.