Should you register your name as a trade mark?

There has been an increasing trend for celebrities to attempt
to register their names as trade marks as they endeavour to maintain a level of control
over their identity. But is this something that might be of wider interest? Why would
you want to register your
name, is it possible, and what are the advantages and disadvantages?

Gaining much publicity in recent weeks have been the attempts by the family of one of the Sandy Hook victims to register their loved one's name as a US trade mark as part of their battle against social media trolls. But will this work? And are there other reasons why you should or should not consider protecting your own name?

Commercial plans

The first issue to consider is in fact the question of whether
or not you plan on using your name as a trade mark. This may sound like an odd question, but the purpose of a trade mark is to identify to potential customers where a product has come from, or who is offering a particular service. This then sets certain expectations regarding quality and service level in the mind of the customer. So, registering your name as a trade mark is
not something you are going
to do just for the fun of it.

Why is this important to consider? Since a trade mark registration is a monopoly
right, if you don't use it in commerce you are unfairly maintaining that monopoly. This is accounted for in trade mark law: if you don't use your registration as a trade mark it can be cancelled for non-use.

Furthermore, in the UK
you have to confirm a real
intention to use the trade
mark when you apply, and in the US, which is relevant for
the Sandy Hook case, you have to demonstrate use before
you can obtain a registration.
So, realistically, you need
some commercial plans if
you are going to consider registration.

Legal owner

A trade mark registration also has to have a legal owner, which may be a real person or a legal person (i.e. a company). If you build up a business using your name as the trade mark, and then sell the business, what happens to the rights in the trade mark and will that impact on your ability to trade using your name in business in the future?

Jo Malone is a classic example of the potential impact. Malone built up a fragrance empire under her own name. This was bought by Estee Lauder, and, while Malone stayed on for a while, when she left she had to leave her name and had restrictions on operating in the market for five years. When that time was up she set up Jo Loves, not another Jo Malone.

In the Sandy Hook case, the drive to register is different, and as the person in question is deceased, many of the above issues are of lesser concern. Here the primary aim is to use Twitter procedures that recognise rights in a registered trade mark to try to curb the highly unpleasant problems being encountered with Twitter trolls. The family hope that, in a rather unconventional way, trade mark law will come to their rescue.

For celebrities, the drive is more to try to control the demand for merchandise, and to be able to control their revenue from contracts for endorsing third-party products. The desire and need for that control will be far greater in at least the short to medium term, driving the desire to obtain trade mark registration, and fast.

But, for most, the potential pitfalls of using your name as your brand, the issues of trade mark ownership, and the longer-term issues if you wish to have an exit strategy for your business, mean that a branding strategy based around your personal name needs to be very carefully considered, with full awareness of the potential restrictions later if you and the business part ways, whether on good or bad terms. SJ

Michelle Ward is a trade mark attorney at Wynne-Jones IP