Shakespeare coined the phrase “what’s in a name” in his play Romeo & Juliet. This phrase has come to mean “what matters is what something is, not what it is called” which generally rings true, but not in the case of trademarks, particularly when it comes to names.
Many celebrities (A-list through to Z-list) are today licensing the use of their name to companies who produce popular consumer products such as perfume, clothing and jewellery.
However, it is not just well-known identities who should register their own name as a trademark. There are many examples of small to medium sized businesses which operate under the name of one person that register that name as a trademark. For example, an interior design and architecture practice in Melbourne run by David Hicks has a registered trademark for David Hicks for those services. The emerging fashion designer Christopher Esber has his name registered as a trademark in relation to clothing. Howard Squires is a funeral business with a registered trademark.
If your own name is the way you brand the goods or services you offer, it is worthwhile thinking about registering your name as a trademark before you hit the big time. Entrepreneur Dick Smith founded his small car radio installation business in 1968. In 1982, he sold the business to Woolworths for a reported $20 million dollars and it still trades under his name. No doubt much of the value of the business attached to the goodwill Dick Smith had built up in his name.
If your name is valuable or has the potential to be valuable, then it is worthwhile thinking about protecting your name through a trademark registration whether you are famous or not. The registration of a celebrity’s name as a trademark allows the celebrity to defend itself from unauthorised use of his/her name. It also signals to prospective licensees that the celebrity is open to the licensing of his/her name for merchandising purposes. Similarly, registration of your own name as a trademark will enable you (or the owner) to take action for trademark infringement against another party using a substantially identical or deceptively similar name. The registered trademark and the goodwill associated with your own name may also become a valuable asset which might be sold or licensed.
In Australia, you can register a full name, a first name, surname or even a signature as a trademark. For example, the fashion designer, Collette Dinnigan has registered her full name as a trademark. Kylie Minogue’s family company has registered both Kylie and Kylie Minogue as trademarks (and even one or two for the lesser known Minogue, Dannii). The Bradman Foundation has registered the surname Bradman as a trademark as well as the full name (Don Bradman) full title (Sir Donald Bradman), nickname (The Don) and even his signature.
As with all trademarks, the question of whether a name is registrable depends on whether the trademark is inherently adapted to distinguish the goods or services in question. A trademark application for a full personal name or a first name will generally be registrable. However, if the full name is a common name, such as John Smith, objection will be raised on the basis that there is a likelihood that other traders without improper motive will need to use the name. When assessing whether a registration for a full name is inherently adapted to distinguish, the type of goods or services for which protection is sought will be relevant.
For surnames, any name that appears more than 750 times in a database of surnames based on the Australian electoral roll will be considered to be common or having a likelihood that other traders without improper motive will need to use the surname. Surnames such as Smith, Nguyen, Brown and Jones will fall into this category. In some instances, it may be possible to argue for acceptance particularly if the goods or services claimed are specialised or unique. Otherwise, it may be necessary to file evidence of use of the trademark to establish that it has become distinctive of the trader’s goods or services.
Regardless of whether you wish to register your full name, a first name, a surname or someone else’s name as a trademark, it is worthwhile getting professional advice.