3rd March 2018 - Jaclyn-Mae Floro

A trade mark is generally a word, phrase, slogan, symbol or design or a combination thereof that identifies the source of the goods and services of the trade mark owner, distinguishing them from the goods and services of another brand owner.

A trade mark lets others know that the goods and services come only from you and not from someone else.

A trade mark is a BRAND which distinguishes your goods and services from those of your competitors.

This is why celebrities and big brand companies are aggressive in protecting their brands under trade mark law because it gives them protection of their BRAND from copiers and imitators.

Beyoncé, Rihanna, Ralph Lauren, Donna Karan, Streep and Justin Bieber are some of the celebrities in a long line who have moved to trade mark their names, or sometimes even catch phrases, to prevent the unauthorised commercial use of their branding.

People trade mark their names to prevent others from using them without permission or to monetise their names from products or services bearing their name.

Filing a Trade Mark for a Name

People trade mark their names all the time but this is only possible if you meet specific requirements.

First off, you must have a business use for your name. That business must also fit at least one of the many categories of goods and services and should be distinctive. That is, your name must function as a trade mark in connection with a supply of goods or services that you are associating with your brand name.

This is the reason why it is easier for celebrities to trade mark their names because they already have that part done. They have consumer recognition and people already know who they are.

The name of a person will be considered capable of distinguishing unless the name as a whole is common and the goods and services are commonplace. Therefore, there is a likelihood that a person with a very common surname may need to use that name in conjunction with an initial or two initials to give the name a level of distinctiveness.

A common surname may be still be registrable if the goods or services are very specialised. As held by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, the test for determining whether a trade mark is inherently adapted to distinguish is:

Firstly, to consider the “ordinary signification” of the word or words proposed as trade marks and how the words would be understood in Australia by the target audience, and,

Secondly, the likelihood that other traders may legitimately wish to use the words in connection with their goods or services because of that ordinary meaning.

Did you know that the signature of an applicant is also registrable!

Meryl Streep

Meryl Streep, celebrated actress over a 40-year long career, winner of three Oscars, three Emmys and six Golden Globes has filed a trade mark to protect her name.

The application was filed with the United States Patents and Trade Marks Office (“USPTO”) on 22 January 2018 claiming entertainment services in class 41, specifically “live, televised and movie appearances by a professional actress and entertainer; personal appearances, speaking engagements, autograph signings, providing a website featuring content in the field of motion pictures”.

Justin Bieber

Justin has filed a trade mark to protect his middle name “Drew” for a new clothing line. The Biebs has also filed trade marks for the names “The House of Drew” and “La Maison Drew”. A search of USPTO records shows that a trade mark for the word DREW was filed on 16 February 2018 in the name of Bieber Time Holdings in class 25 for clothing and wearing apparel. Justin has various other trade marks including for JUSTIN BIEBER, BIEBER FEVER, JUSTIN BIEBER THE KEY and JUSTIN BIEBER’S GIRLFRIEND.

Taylor Swift

Taylor Swift has filed multiple trade marks including TAYLOR SWIFT in class 9 for mobile telephone covers and sunglasses, class 14 for key rings, class 15 for musical instruments, class 16 for stationery boxes, class 21 for beverageware, class 25 for clothing, class 26 for hair accessories, class 28 for dolls, class 41 for entertainment and educational services.

Take-away points

• People trade mark their names because their names are recognizable and to protect their brand from being exploited by others or used over the Internet
• A trade mark for your name should be associated with the products or service that you supply under that name
• Therefore, a person’s name should be associated with a business use for it
• Trade mark your name if it is valuable to your brand

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au

 
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.