Maybe you’re becoming internet famous and you’re wondering what the next steps are, or you’re just starting a company and you want to use your last name as your brand. You may have a lot of questions about what can and can’t be trademarked.
A mark cannot be trademarked if it is mainly just a surname. The applicant must prove that the name distinguishes a brand or product through rarity, alternate meaning, or distinct stylization. A name used in conjunction with other words or symbols that sets apart a brand may be trademarked.
The USPTO (United States Patent and Trademark Office) advises against applying for a trademark solely based on it being a name, but there are other ways to trademark a name. Take a look at some examples below and learn more about what names can be trademarked.
Trademarking a Name
In most cases, trademarking a name, just for the sole purpose of trademarking a name, won’t fly. You can’t trademark a name for it to be unique. It usually actually happens the other way; a name has to be unique enough in order to be trademarked.
There are cases where names can be trademarked, but there are more reasons for the successful application other than the name itself. To trademark a name, there must be a purpose behind it. Typically, that means that the name represents a brand, company, or product. In some cases, the name is trademarked for creative purposes. This can get a bit confusing because of its similarity to a copyright.
To trademark a name, there must be something distinguishing about it that relates to your brand or product. Some things to consider when you are wondering about your name for a trademark are:
- The rarity of your name
- Alternate meanings your name may bear
- The combination of your name with another name or word or phrase
- The distinctness of the design or image with the name
- How the name specifically relates to the product.
Names in Branding
There are a lot of famous brands out there that are simply surnames. They are perfectly qualified and have been registered as trademarks. In most cases, the surname in conjunction with a product is either rare or unique, or it has been used so long in relation to a brand that the brand is recognized by the name. Some brands have used the surname branding for so long, consumers have forgotten that it was once “merely primarily a surname.”
This is the story for the automobile brand, Chevrolet. Louis Chevrolet founded the automobile company with William Durant. Their first logo was Chevrolet’s surname in black cursive. The name gained popularity in connection with the automobiles and is now noted only as a brand and logo, rather than a name.
Another name that has been trademarked as a brand is Cassio. Cassio is a fairly common last name, worldwide, but in the US, Cassio isn’t very common. This makes the brand unique and original.
In branding, sometimes using a combined set of names or mashing two names together will help you get leverage in the registration process. For example, one common brand that is a combined name is Adidas. Adidas is a mashup of the name Adolf (Adi) Dassler: Adi+Das. By mashing the name, Adidas created a unique and original word that has grown to be connected with athletic wear and shoes among consumers.
While Adidas is a bit more clever, a couple more examples of combined name trademarks are Johnson & Johnson and Smith and Wesson. These are comprised of pretty common last names, but adding the two together and creating a strong representation of a brand with them was enough to pass registration.
Some celebrities have tried to trademark their names for the sake of trademarking their name, but those don’t usually meet qualifications and are usually rejected. There are some names, however, that have made it to trademark status. Kim Kardashian actually owns registered trademarks of several different variations of her name and her children’s names. These were accepted and registered because their names are unique enough, and they already sell merchandise with their names on it. Because the “brand” is recognized by the name, it makes sense for the Kardashian name to be trademarked.
In recent times, many celebrities have tried to trademark their children’s names in order to retain their unique originality. Generally trademarking a name for the sake of trademarking a name gets rejected. Kylie Jenner has trademarked a name combination of her daughter’s name, “Stormiworld.” To accomplish this legally, Jenner had to apply to register the name, but also apply with an ITU (intent to use). This means that when her daughter is old enough, they plan to create a brand using her name. Kylie or Stormi will be able to create their own clothing or makeup line using the trademarked name when the time comes.
The world of comics and superheroes and supervillains is rampant with trademarked names. For example, the name “Mary Jane” is trademarked by Marvel. Only Marvel has the right to use the name Spiderman’s girlfriend’s name. While “Mary Jane” is a pretty generic name, it was still trademarked because the name grew to be so closely connected with the Spiderman Comics and following movies.
Other fictional names are also trademarked in order to preserve the rights to a story. Without registering the name for a trademark, any other company could steal the character and take profits from the original creators of the name. There is some overlap with copyrights when it comes to works of fiction. Typically, the work itself is copyrighted, but the names of people, places, or objects can be trademarked if they meet the criteria.
Examples of Names that Can’t be Trademarked
If you try to trademark a name for the purpose of trademarking a name, you likely won’t get approved and your name won’t be registered. Without a brand connection, your name won’t have any credibility. While the examples below are highly unlikely to get a pass in the application process, they still might have a chance if they are recognized by consumers in relation to a brand.
Derek White is a common enough name, and if you tried to trademark it as is, you’d likely be denied. If we assume there is no connection to a business or product already established and recognized, this name could easily be turned down.
Jones is a really common last name. It wouldn’t get approved based on the fact that it is “primarily merely a surname.” While you could attempt to create a strong connection with your products in order to gain credibility with the name Jones, you likely won’t have success registering it. You could, however, try to register a combo name. Make sure you check for availability though, as Jones Soda already exists as a registered trademark. There are probably many more registered trademarks that include the name Jones.
Check Trademark for Availability
Before you begin using a name as a trademark, you should check for the availability of your trademark. While you don’t have to register a trademark in order to use it in connection with a brand, you should check for availability, so you can be sure to avoid any infringement issues.
You can check your state’s database for any similar name trademarks, or you may use the TESS (Trademark Electronic Search System) on the USPTO website to look for trademarked names that might be too close to yours.