Trademark Smackdown: Celebrity Names vs. Brand Names

The world of trademarks is a complicated one, and the battle for brand identity can get fierce, especially when celebrities enter the mix. While celebrities and brands rely on trademarks to protect their unique identities in the marketplace, the game's rules can differ significantly. 

Celebrity Names

Unlike brand names, which are generally created to identify a product or service, celebrity names are pre-existing identities. This creates a balancing act. Celebrities have a legitimate interest in protecting their name and likeness from unauthorized commercial use. However, trademark law also aims to prevent individuals from stifling competition by claiming exclusive rights to common words or generic names.

The "Blurring" Factor

One key factor in determining whether a celebrity can trademark their name is the concept of "blurring." Suppose a celebrity's name has become so strongly associated with their brand that it no longer functions as a mere identifier but becomes synonymous with a specific product or service. In that case, trademark protection is more likely to be granted. For example, "Michael Jordan" is not just a name, it's a brand associated with athletic excellence. This distinction was crucial in the case of Michael Jordan vs. Quality Kings:

• The Case: Michael Jordan sued a sporting goods company, Quality Kings, for selling t-shirts with his name and jersey number. Quality Kings argued that "Michael Jordan" was a generic term for a famous basketball player.
• The Outcome: The courts ruled in favor of Jordan, recognizing that his name had transcended mere identification and became a brand signifying a particular quality and source.

Brand Names: All About Distinctiveness

For brands, the path to trademark protection is generally more straightforward. The key here is distinctiveness. A brand name should be unique and not easily confused with existing trademarks. Descriptive terms or generic names are typically not eligible for trademark protection. For instance, the name "Red Shirt" wouldn't be granted a trademark because it simply describes a product.

The "Likelihood of Confusion" Test

Even for seemingly distinctive brand names, the "likelihood of confusion" test is applied. This means the trademark office will consider whether consumers might be confused about the origin or source of a product based on the brand name. A famous example is the case of Victoria's Secret vs. Victoria's Secret Restaurant:

• The Case: Victoria's Secret, the lingerie giant, sued Victoria's Secret Restaurant over trademark infringement. The restaurant argued that their focus on desserts was distinct from lingerie.
• The Outcome: The courts sided with Victoria's Secret, recognizing the potential for consumer confusion due to the identical name, even though the products themselves were different.

Conclusion

Celebrities need to demonstrate that their name has transcended mere identification and become a brand in itself. Brands, on the other hand, must ensure their chosen name is distinctive and doesn't create confusion with existing trademarks. By striking this balance, both celebrities and brands can protect their unique identities in the ever-competitive marketplace.