What’s in a name?
Recently, the youngest of the Kardashian-Jenner clan, sisters Kendall and Kylie Jenner applied to trademark their first names with the United States Patent and Trademark Office (USPTO). Kylie Jenner applied to trademark her full name for goods such as hand bags, wallets, cosmetic bags, backpacks, and just “Kylie” for advertising services, entertainment services, endorsement services, personal appearance by a celebrity and the like. Kendall Jenner applied to trademark her name on clothing items, hair accessories, and other fashion items. After this made news last week, the question I received was “how can they trademark their first names? Is that possible?”
Using a personal name as a trademark is tricky, but some of the most common trademarks today, think companies like “Chanel”, “Ford”, “Levis”, started as personal names. Often, personal names get rejected by the USPTO when it is likely that they are perceived as primarily a personal name. 15 U.S.C. § 1052(e). For example, the last name Lane may not be considered primarily a personal name due to the fact that it has multiple meanings/definitions. In order to gain trademark protection most registrants need to include proof that their name has gained secondary meaning in the market. Secondary meaning is defined as “a mental association in the public’s mind between the alleged mark and single source of the product.” It can usually be proven through circumstantial evidence such as how long the mark has been used, volume of sales under the mark, advertising with the mark, among others. Remember, trademarks are to protect and inform consumers of the source of goods or services, thus the name itself has to be associated with a good or service. Seeing the name “Kylie”, for example, needs to invoke that the endorsement or advertisement is associated with Kylie Jenner.
For some celebrities it is easier to prove secondary meaning than for others. For instance, a celebrity makeup artist who decides to start his or her own makeup line, will likely have an easier time proving to the USPTO that consumers associate their name with their makeup product. But the same celebrity makeup artist interested in adding their name to a cookware line may have a tougher time.
If certain measures are taken, using a personal name as a trademark can be effective and rewarding, but it might take a Kardashian/Jenner-caliber celebrity to pull it off.