What to Consider When Using Your Last Name as Your Brand

Your last name can be a powerful branding tool. Businesses can build goodwill around their own names through the quality and experience of the goods or services they provide. However, trademark law treats last names differently than more distinct marks, and those rules can create unexpected problems.

Under U.S. trademark law, a mark that is “primarily merely a surname” is generally not registrable on the Principal Register (the primary trademark registry at the Trademark Office) without proof of acquired distinctiveness or that customers have come to associate the last name with a certain business. The rationale behind this is that it would not be fair for a business to be able to monopolize a common last name that others could legitimately use. As a result, trademark applications for last names are often refused registration. 

The Trademark Office evaluates several factors when analyzing whether a mark is primarily a surname, including how common the name is, whether anyone associated with the applicant has that surname (e.g., whether it’s the applicant’s last name), whether the term has another recognized meaning, and whether the mark creates a separate commercial impression. Some might think that using a last name for their business automatically creates trademark rights, but the mark must be distinctive to be protectable. Well-known marks like FORD and HILTON became protectable because consumers eventually associated those names with the respective businesses. Building and maintaining that level of recognition can take years of advertising and sales in the marketplace.

Assigning a Surname Trademark

Even after a surname mark becomes a distinctive protectable mark, another issue can emerge: assignment of the trademark. Trademark assignments are common during business transactions such as acquisitions, but can take place whenever the parties agree. When assigning a surname trademark, a business transfers ownership of the mark along with the goodwill of the business which includes value intangible assets such as the brand’s recognition and customer loyalty. Once the assignment is complete, the transferee (and not the person whose last name is in the mark) owns the trademark rights.

Business owners might believe that because the mark is their last name, they can later use it in connection with another business. However, trademark ownership is based on using the mark in commerce and established consumer recognition, not personal identity. If consumers associate the surname with the transferee’s business (i.e., the business the trademark was transferred to), the original owner’s later use could create consumer confusion and a trademark infringement risk. This is especially the case when the later use is for a similar good or services, or in an overlapping industry.

Recently, a similar issue surfaced with perfume designer, Jo Malone. Luxury beauty company, Estée Lauder, purchased Malone’s JO MALONE perfume brand along with the trademark rights to the JO MALONE mark. Malone started another perfume business under the name JO LOVES and when Malone partnered with fashion retailer, Zara, to sell perfume and candles, Estée Lauder filed a lawsuit for trademark infringement. In particular, Estée Lauder took issue with the JO LOVES packaging which included the tagline, “A creation by Jo Malone CBE, founder of Jo Loves." While this issue concerned the right to use a person’s full name, this issue of naming rights is the same: names in a trademark, whether last names or full names, belong to the trademark owner.

For businesses considering name-forward brands, it is important to plan carefully. Trademark counseling and clearance searches should be conducted early, and any assignments should be reviewed closely before finalizing. Business owners should consider whether they are comfortable with the possibility of losing control over a name that is also part of their personal identity. If you are considering name-forward branding or trademark use, please don’t hesitate to contact Trellis!

DISCLAIMER: This blog post is meant for informational purposes only and does not constitute specific legal advice or create an attorney-client relationship. Readers should discuss their specific situation and considerations with an attorney.