What’s in a Name? For Public Figures, Maybe a Trademark!

For public figures, establishing a name as a trademark can offer substantial benefits in today’s highly competitive and globalized market. By trademarking their names, celebrities, influencers, and other high-profile individuals can protect their brand identities, maintain control over endorsements, and secure exclusive rights in certain industries. But trademarking a personal name isn’t a simple process, and it comes with limitations, as recent high-profile cases illustrate.

In this blog, I’ll walk you through the advantages and potential drawbacks of trademarking personal names, along with case examples and key legal considerations.

Why Trademark a Personal Name?

Trademarking a name allows public figures to establish exclusive rights over its use in connection with specific goods or services. This can be incredibly valuable for celebrities who are launching product lines, such as Kylie Jenner’s Kylie Cosmetics, or for athletes like Michael Jordan, who have built global brands around their identities. By securing a trademark, a public figure gains legal standing to prevent others from profiting off their name without permission.

For example, Beyoncé and Jay-Z have obtained trademarks on their names to protect their brands across multiple industries, including music, fashion, and entertainment. A trademark can therefore prevent third parties from using similar names in ways that might mislead consumers or dilute the brand’s distinctiveness.

Pros of Trademarking a Personal Name

Brand Control and Protection
A trademarked name allows public figures to have greater control over their brand. This can prevent unauthorized use of their name in contexts that may harm their reputation or dilute their brand value. For instance, Oprah Winfrey has trademarked her first name, which helps protect her identity as a media mogul and public figure.

Monetization Opportunities
A trademark offers public figures exclusive rights to use their name for commercial purposes. This opens doors for merchandising, endorsements, and licensing, ensuring they’re the only ones profiting from their name in their chosen markets. Taylor Swift, for instance, has trademarked multiple phrases associated with her, creating exclusive licensing opportunities for products tied to her brand.

Legal Recourse Against Infringers
With a trademark in place, public figures have grounds to take legal action against entities attempting to use their name without authorization. A well-known case is Michael Jordan v. Qiaodan Sports, where Michael Jordan successfully fought a Chinese sportswear brand that was using the Mandarin translation of his name and likeness without permission. The Chinese court ultimately ruled in his favor, reinforcing the value of protecting one’s name as a trademark.

Strengthening Brand Identity
Trademarking a name can reinforce a public figure’s identity and help prevent name-related confusion in the marketplace. For example, the Kardashian family has registered trademarks on their individual names to build distinct, recognizable brands across cosmetics, apparel, and other industries.

Cons and Challenges of Trademarking a Personal Name

Establishing Distinctiveness
Trademarking a personal name can be challenging because it must have distinctiveness to be eligible for registration. Generally, famous or unique names with established brand associations—like “Cher” or “Madonna”—are easier to trademark. For example, common personal names are typically rejected for trademark registration unless they have acquired distinctiveness through extensive use in commerce. In contrast, uncommon names with public notoriety can be trademarked, but still require substantial evidence of secondary meaning.

Trademark Scope Limitations
A trademark does not give unlimited rights to the name. Rather, it grants exclusivity only within specific classes of goods or services. This is why “Jordan” could be used by other businesses outside the sports or apparel sectors without infringing on Michael Jordan’s brand. Kim Kardashian West had to secure specific trademarks for her beauty and fragrance lines, for instance, but cannot prevent others from using her name in unrelated industries.

Potential for Loss of Rights
If a trademarked name isn’t actively used in commerce, it can be subject to cancellation or opposition. An example of this risk was Paris Hilton v. Hallmark Cards (2007), where Hilton sued for the use of her likeness and catchphrase “That’s Hot” on greeting cards. The court ruled that Hilton’s association with the catchphrase had created enough distinctiveness, but this case highlights the need for active use to defend trademark rights.

Challenges in International Jurisdictions
Trademarking a name internationally can be difficult due to varying standards for registration and enforcement. For example, Rihanna encountered obstacles when attempting to protect her name globally, as different countries have different trademarking standards, making it harder to enforce rights across borders. In some jurisdictions, trademarks on personal names are rarely granted unless they are highly distinctive or well-known globally.

High-Profile Trademark Cases Involving Personal Names

Prince Harry and Meghan Markle: In recent years, the Duke and Duchess of Sussex have attempted to trademark their brand “Sussex Royal” in both the U.K. and the U.S. However, they faced challenges as U.K. regulations prohibit the use of “Royal” in branding without authorization. They ultimately withdrew their trademark applications, underscoring the limitations that can arise when trademarking personal or governmental affiliations in certain regions.

Kylie Jenner vs. Kylie Minogue: A high-profile trademark dispute involved Kylie Jenner’s attempt to trademark the name “Kylie” in 2017 for her cosmetics line. Australian singer Kylie Minogue opposed the application, arguing that she had been widely known as “Kylie” before Jenner, which could lead to consumer confusion. The U.S. Patent and Trademark Office ultimately sided with Minogue, demonstrating that trademark rights over personal names often hinge on prior public association and brand recognition.

Michael Jordan’s Global Fight: The Qiaodan Sports case in China mentioned earlier illustrates the international complexity of protecting one’s name. Although Jordan’s name was transliterated into a different language, the court recognized the intent to capitalize on his brand reputation, reinforcing his rights. This ruling was a landmark decision for U.S. public figures seeking to protect their brands in foreign jurisdictions, especially in cases involving transliterations or cultural adaptations.

Practical Considerations for Public Figures Considering a Trademark

Identify Specific Goods or Services: Determine the primary industries where the name will be used, whether for a product line, entertainment services, or endorsements. This will guide the trademark application and ensure that protection is comprehensive within the chosen categories.

Develop Proof of Secondary Meaning: If the name is somewhat common, substantial evidence will be needed to prove its association with a brand. This can include marketing data, media coverage, and evidence of widespread recognition among consumers.

Work with Experienced Trademark Counsel: Trademarking a personal name, especially internationally, can be complex. Experienced counsel can help navigate the intricacies of trademark law, provide guidance on required evidence, and help manage risks like oppositions and cancellations.

Consider a Coexistence Agreement: In cases where other parties have similar names, a coexistence agreement can define each party’s rights, reducing the risk of infringement disputes and clarifying each party’s use of the name.

Conclusion

For public figures, trademarking a personal name can be an invaluable tool for brand control, monetization, and legal protection. However, the process requires a careful understanding of trademark law, potential limitations, and proactive enforcement. By weighing the pros and cons, public figures can make informed decisions on whether trademarking their name aligns with their long-term brand goals.

At Hebert-Thomas Law, PLLC, we are passionate about helping public figures and brands secure their trademarks, protect their identities, and expand their commercial opportunities. If you’re considering trademarking your name, contact us to discuss how we can help safeguard your brand and manage the legal complexities involved.