That’s My Name and You Can’t Use It: Trademarks Battles Over Personal Name Marks

There was snickering recently in the blogosphere about efforts by Kylie and Kendall Jenner to register their names as trademarks in relation to various goods and services, including “entertainment in the nature of providing information by means of a global computer network in the fields of entertainment, fashion and pop culture,” trademark-speak for a gossip website. Apparently these sister/models were guests on the Kardashian reality show and have garnered their own spinoff series. The dig was that spoiled teenagers want their names to belong to them and them alone.

There may be excellent philosophical reasons to bemoan the unearned fame of people who garner attention and riches for no reason other than that they are young, attractive and were birthed by famous and wealthy parents. However, the Jenner sisters are on sound legal ground to seek registration of their names as trademarks, provided that they are using their names to identify goods and services in interstate commerce.

Trademark law seeks to protect use of words, symbols or combinations to identify goods or services. A trademark may be entitled to legal protection when is acquires “secondary meaning” – association with goods or services – through use in interstate commerce. The goal of trademark law is to alleviate consumer confusion. Thus, when the consuming public has come to recognize “Apple” as associated with a specific source of technology products, trademark law would prevent later market entrants from using the “Apple” mark in the same field.

Use of personal names as trademarks to identify goods and services has a time-honored history – think Ralph Lauren or Christian Dior in the fields of fashion and fragrance. More recently, personal names have acquired trademark status as identifiers of online commentary, such as “Bloomberg” for business reporting and “Perez Hilton” for entertainment news and celebrity gossip.

Contrary to the suggestions of gossip bloggers, Kylie and Kendall cannot prevent parents from naming their babies “Kylie” or “Kendall,” nor, as a general matter, can they prevent other Kylies and Kendalls from using their own names. They may, however, be able to prevent others from selling competing goods and services with those names as an identifying mark. This is not a function of teenage entitlement or deference to the glamorous, but rather the goal of trademark law to avoid marketplace confusion.

There is legal precedent for a trademark owner preventing others from using their own names in connection with goods or services in a manner likely to yield confusion. The most famous case was between the three Gallo brothers, Ernest, Julio and Joseph. Ernest and Julio had had brought the “Gallo” mark to heights of fame to identify their wine business. Youngest brother Joseph had used his “Gallo” name to identify a cattle business without controversy; however, in later life he introduced a line of “Joseph Gallo” cheese. The federal courts found that consumers linked wine and cheese, and that the likelihood that consumers would wrongly conclude that Ernest and Julio’s famous wine business was the source of the cheese warranted a permanent injunction barring Joseph from using his surname to identify that product. Joseph did not help his case by following recommendations of his sales managers that use of his “Gallo” name to identify his cheese would enhance sales.

Kylies and Kendalls beware: attempting to compete with the Jenner sisters with use of your own names in the marketplace may result in a stern letter from their lawyers. You would be best advised to come up with a moniker no one else is using in the same space.