All Are Equal In The Eyes Of USPTO: Celebrities, Sports Stars, and Trademarking Names
Michael Jordan retired from basketball in 2003. That’s 16 years ago. However, thanks to the ‘Jordan’ brand operated by Nike, he still earns around $100 million a year. Football legend David Beckham left the sport in 2013, but somehow, I don’t think he is relying on a British government pension. He is raking in around $75 million per annum, thanks mainly to deals with H&M and Adidas.
Michael Jordan, David Beckham, Tiger Woods, Ronaldo, and many other sports legends are not simply players. They are brands. And for corporations, putting their name to a product can result in a massive increase in sales. For example, the legacy created between Jordan and Nike generated $3.1 billion in revenue during its 2017 fiscal year.
But can a name that is worth so much be trademarked?
Does Tiger Woods own his own name?
In 2015 there was a rumour that Nike owned Tiger Wood’s name. A builder of the golfing legend’s restaurant in Florida claimed that he was told Nike owned the rights to Mr Wood’s name.
The claim was quickly contradicted by Mr Wood’s agent, Mark Steinberg and Nike.
"I can’t imagine how this could have been communicated this way. It is wholly inaccurate and categorically false.. Tiger owns his own name and always had. He can use his name in any form he chooses. Nike would confirm that if asked."
Nike promptly complied, stating:
“Nike does not own the name ‘Tiger Woods.’ We can confirm that Mark Steinberg’s comments are accurate.”
Interestingly, athletes do not necessarily own their tattoos. According to the New York Times, this can prove a problem for the video gaming industry when tattoos are digitally recreated on avatars representing sporting heroes. The US Copyright Office records that any creative illustration “fixed in a tangible medium” can be copyright.
Even though Nike has not trademarked ‘Tiger Woods’, celebrities can and do apply to trademark the name of themselves and their children.
And they are not always successful.
Trademarking a name
Many celebrities who are brands in their own right have trademarked their names. U.S. President Donald Trump, First Lady Melania Trump, Beyoncé, Taylor Swift, Rihanna, Victoria Beckham, Justin Bieber, Bruce Springsteen, Katy Perry, and Kylie Jenner are well-known examples.
However, registering a name as a trademark with the U.S. Patent and Trademark Office (“USPTO”) is not always straightforward.
For example, under the Lanham Act, a senior and junior user’s mark is protected. Known as the doctrine of reverse confusion, the law enables small, senior users to protect their trademark rights against junior users whose marks have gained commercial strength through extensive marketing. Kylie Jenner discovered the complex issue of reversal confusion when she applied to USPTO for the mark KYLIE JENNER for a variety of clothing items in class 25. It was refused because a registered mark KYLEE already existed. It was owned by Mimo Clothing Corp and also related to apparel items.
The Examiner stated the different spellings of KYLIE and KYLEE were not enough to distinguish the marks because phonetically, they sounded identical. It was concluded consumers could mistakenly assume that KYLIE JENNER clothing came from the same source as KYLEE apparel.
Kylie Minogue also opposed a Kylie Jenner trademark application, this time for KYLIE COSMETICS. However, the Australian singer’s company withdrew its opposition, although it did go as far as the Trademark Trial and Appeal Board.
Under US trademark law, a surname must have "acquired distinctiveness" before a mark can be successfully applied.
If public perception of a particular name is that of a surname, not a trademark, the applicant will have to prove “acquired distinctiveness”. However, first names and first names used in conjunction with surnames are considered inherently distinctive.
Registering the names of celebrity children
Power-couple Beyoncé and Jay-Z have repeatedly tried and failed to have the name of their daughter, “Blue Ivy Carter” trademarked. There 2012 application largely failed because the USPTO concluded the couple had failed to show they had actually used the mark for the 14 classes of goods they had tried to register it for.
The reason for trademarking a child’s name is celebrities want to ensure they beat third-parties seeking to profit of their children to the punch.
Jay-Z told Vanity Fair in 2013, “People wanted to make products based on our child’s name, and you don’t want anybody trying to benefit off your baby’s name.”Unfortunately, although the reason for this type of application makes sense, applications of this kind almost always fall short of the strict ‘in use’ requirement under U.S trademark law. The Kardashians have made a recent application to USPTO to trademark the names of their children; North West, Saint West, True Thompson, Stormi Webster, and Chicago West. These are likely to be rejected (or put on hold) unless it can be proved the marks are in use, for example, they are linked to appearances in the family’s TV programme.
Trademarking names is far from simple, even for the rich and famous. If compliance with trademark laws is not established, even the most powerful celebrity has little chance of achieving success.