Should You Trademark Your Name on Your Product?

Intellectual property

What’s at risk in surname trademarks

Entrepreneurship is booming and with it come new products on the market every day. It’s easy to understand why anyone who spent so much time, effort and money creating a product would want their trademarked name emblazoned on it (Ex. Zamboni, Miller Beer). However, it’s worth taking the time to think that through. Most people are unaware of trademark laws and the potential challenges that could arise down the road after trademarking their names.

A product name is typically considered sound if it has the following qualities:

  • It appeals to the product’s target audience
  • It implies a significant brand benefit, attribute or quality
  • It’s available to be trademarked for legal protection
  • It invites the creation of customer loyalty.
  • It helps motivate customers to purchase the product

However, trademarks that consist of primarily a surname are generally deemed to be weak by the U.S. Trademark Office. It might even refuse to register a trademark using a common surname. Including first names and/or initials can add strength to the trademark, but that will likely not solve all your potential troubles.

Three areas of risk

First, your surname could already be trademarked for something completely different from your product. For instance, if you manufacture vegan cookies and want to trademark them as Campbell’s Cookies, you’ll probably run into problems with the Campbell Soup Co. And it doesn’t have to be a high-profile trademark like Campbell’s that will pursue you.

Second, consider the possibility of a family dispute, which is hardly uncommon. Family members, no matter how close or distant geographically or by blood, can prevent you from using your own name.  Winemaking brothers Ernest and Julio Gallo’s other brother Joseph was a prominent dairy farmer. They had to sue him from using the family surname on his cheese products. Vince Ferragamo provides another example of a family trademark feud. The former NFL quarterback was prevented from using his own name on his winery by the Italian company Ferragamo S.p.A., makers of luxury shoes.

Third, consider that you may one day decide to sell your company and that company trademarks are typically included in such sales. Celebrity fashion designer Joseph Abboud sold his company, which included his trademarked name, to J.A. Apparel Corp. A lengthy court battle ensued when he attempted to use his name on a new business venture. The court ruled that Abboud cannot use his name as a trademark, service mark, trade name or brand name personally or in any businesses with which he is affiliated.

But if you still want to use your name….

Being creative and coming up with a unique name for your brand is your best bet. If you insist on using your name, add something creative to it. An example of someone who successfully pulled this off is Wally Amos, the originator of Famous Amos cookies. While he no longer owns the company or the Famous Amos trademark, he can still use his legal name or creative versions of it in other ventures.

Source: Roger P Zimmerman. “Trademarking Your Name Can Drive You To Drink: The Risks and Benefits of Naming a Beer After Yourself.” 23 Feb., 2017.

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