PERSONAL NAMES: Trademark Issues
IVAN HOFFMAN, B.A., J.D.
In Peaceable Planet, Inc. vs. Ty, Inc. et. al., the plaintiff developed and was selling a stuffed animal, a camel, that it called “Niles.” It claimed a trademark on the name as applied to such products. Defendant subsequently began to sell a plush toy, a camel, that it too named “Niles.” Defendant is the owner of the “Beanies Babies” brand of stuffed animals. A litigation followed in which the plaintiff claimed, among other claims, that the defendant was trying to pass off the plaintiff’s camel as defendant’s camel (in other words, the claim was that consumers purchasing the plaintiff’s camel would believe they were getting the defendant’s camel) and that, the plaintiff claimed, the defendant’s camel was inferior to that of plaintiff which then disparaged the plaintiff’s brand. This is called “reverse passing off.” The district court ruled that the name “Niles” was a personal name and thus descriptive and could not be the subject of a valid trademark unless the claimant, the plaintiff in this instance, proved that the said name had acquired a secondary meaning—meaning that the public associated the name “Niles” with plaintiff’s camel toy—which the district court ruled the plaintiff had failed to do. The main issue on appeal was whether or not the plaintiff could even have a valid trademark in the name “Niles” as applied to the stuffed animal.
The Court recited the said general rule, saying:
The Court further stated:A descriptive mark is not legally protected unless it has acquired secondary meaning. [citations omitted] An example is “All Bran.” The name describes the product. If the first firm to produce an all-bran cereal could obtain immediate trademark protection, and thus prevent all other producers of all-bran cereal from describing their product as all bran, it would be difficult for competitors to gain a foothold in the market. They would be as if speechless. Had Peaceable Planet named its camel “Camel,” that would be a descriptive mark in a relevant sense, because it would make it very difficult for Ty to market its own camel—it wouldn’t be satisfactory to have to call it “Dromedary” or “Bactrian.”
However, the Court further said:The reluctance to allow personal names to be used as trademarks reflects valid concerns (three such concerns, to be precise), but they are distinct from the concern that powers the rule that descriptive marks are not protected until they acquire secondary meaning. One of the concerns is a reluctance to forbid a person to use his own name in his own business. [citations omitted] Supposing a man named Brooks opened a clothing store under his name, should this prevent a second Brooks from opening a clothing store under his own (identical) name even though consumers did not yet associate the name with the first Brooks’s store? It should not. [citations omitted]
Another and closely related concern behind the personal name rule is that some names are so common—such as “Smith,” “Jones,” “Schwartz,” “Wood,” and “Jackson”—that consumers will not assume that two products having the same name therefore have the same source, and so they will not be confused by their bearing the same name. [citations omitted] If there are two bars in a city that are named “Steve’s,” people will not infer that they are owned by the same Steve.
The third concern, which is again related but brings us closest to the rule regarding descriptive marks, is that preventing a person from using his name to denote his business may deprive consumers of useful information. Maybe “Steve” is a well-known neighborhood figure. If he can’t call his bar “Steve’s” because there is an existing bar of that name, he is prevented from communicating useful information to the consuming public. [citations omitted]
The Court noted that the statutory prohibition in the Lanham Act relates to “surnames” and does not speak to the issue of first names.…—that the “rule” does not apply if the public is unlikely to understand the personal name as a personal name.
[It should be noted that the Lanham Act also prohibits a trademark that:
The Court also noted that the discussion about personal names within the context of this case is not really about personal names at all since the product is not attached to an actual person seeking to use his or her personal name. Instead, in the context of this case, the issue is whether or not the public has come to associate the name “Niles” with plaintiff’s stuffed camel and in that regard the name “Niles” is, as to the said goods, not really “descriptive” but “suggestive,” the latter category being entitled to more trademark protection than marks that are descriptive. The Court said:(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.]
It further stated:Suggestive marks are protected by trademark law without proof of secondary meaning. [citations omitted] Secondary meaning is not required because there are plenty of alternatives to any given suggestive mark. There are many more ways of suggesting than of describing. Suggestive names for camels include “Lawrence [of Arabia]” (one of Ty’s other Beanie Babies is a camel named “Lawrence”); “Desert Taxi,” “Sopwith” (the Sopwith Camel was Snoopy’s World War I fighter plane), “Camelia,” “Traveling Oasis,” “Kamelsutra,” “Cameleon,” and “Humpy-Dumpy.”
The Court distinguished between uses of what might be a personal name in the context of being used as a personal name versus uses of what might be a personal name used in a manner that is not as a personal name.Treating the personal-name rule as a prohibition against ever using a personal name as a trademark (in the absence of secondary meaning) would lead to absurd results, which is a good reason for hesitating to press a rule to its logical limit, its semantic outer bounds. It would mean that the man who invented “Kitty Litter” could not trademark the name (“Kitty” is a more common first name than “Niles”) until it had acquired secondary meaning. So as soon as “Kitty Litter” hit the market, a much larger producer of cat litter could appropriate the name, flood the market with its product, and eventually obtain an enforceable trademark in the name by dint of having invested it with secondary meaning, squashing the originator. …On Ty’s conception of the personal-name rule, without a patent Lowe [the inventor of Kitty Litter] could not have prevented a large company from selling the same product under the same name, thus squashing him. We cannot see what purpose of trademark law would be served by encouraging such conduct. Ty marks its “Niles” camel with the trademark symbol, and given the ratio of its sales to those of Peaceable Planet’s “Niles,” the Ty Niles may be well on its way to acquiring secondary meaning—at which point it will be able to enjoin Peaceable Planet from using the name on Peaceable’s camel even though Peaceable thought of naming a camel “Niles” before Ty did.
The Court found that:There is a town named “Niles” in Illinois and another one in Michigan, and this is a reminder of the importance of context in characterizing a trademark. “Apple” is a generic term when used to denote the fruit, but a fanciful mark (the
kind that receives the greatest legal protection) when used to denote a computer. If a gas station in Niles, Michigan, calls itself the “Niles Gas Station,” it cannot before acquiring secondary meaning enjoin another firm from opening the
“Niles Lumber Yard” in the town, on the ground that people will think that the firms are under common ownership. [citations omitted] In a town named Niles, firms bearing the name are sharing a name that is too common to be appropriable without proof of secondary meaning. That is not the case when the name is applied to a camel. And while both Niles, Illinois, and Niles, Michigan, are fine towns, neither is the place of origin of the camel or identified with that animal in some other way.
[Other parts of the decision dealing with other issues including those related to product disparagement and defamation as well as other issues are beyond the scope of and are not dealt with in this article.]We conclude that Peaceable Planet has a valid trademark in the name “Niles” as applied to its camel, and so the case must be returned to the district court, where Peaceable Planet, to prove infringement of its trademark (“reverse confusion”), will have to show that a substantial number of consumers think that its camel is actually Ty’s. For in that event Peaceable Planet will have suffered injury by losing “the value of the trademark—its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets,…” [citation]
Another case, this one out of the First Circuit Court of Appeals, further discusses these principles quite clearly. In Flynn vs. AK Peters Ltd., Flynn filed suit alleging, among other causes of action, a violation of the Lanham Act because the publisher (Peters) issued a revised version of a book Flynn had co-authored previously and included Flynn’s name as one of the authors of the revised edition but Flynn had not agreed to the content of the revised edition.
The Court summarized Flynn’s claim in this regard as follows:
The Court stated:Flynn claims that AK Peters violated the Lanham Act by listing her as an author of the second edition of Mobile Robots without her consent. More specifically, she alleged in the district court that "[t]he misleading use of her name is likely to cause confusion by consumers as well as plaintiff's academic peers in that it will be assumed that she contributed to the revisions and approved of the changes."
In other words, personal names cannot be the subject of trademark protection, which is the essence of the Lanham Act, unless and until they have achieved a secondary meaning.Personal names are included in the class of common words that may not secure protected trademark status until secondary meaning has attached. See Donoghue v. IBC/USA (Publications), Inc., 886 F. Supp. 947, 952 (D. Mass. 1995) ("[S]urnames, when used as trademarks, are inherently indistinctive, i.e., weak [and] are permitted trademark protection only upon a showing that they have become strong marks by acquiring distinctiveness through secondary meaning."); 2 McCarthy, supra, § 13:2. According to Professor McCarthy:Secondary meaning grows out of long association of the [personal] name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business.
The Court stated (citing a trademark legal treatise):
The Court agreed with the trial court that Flynn had failed to demonstrate that she had any secondary meaning in regard to her name in the field of robotics. The Court stated:"Proof of secondary meaning entails vigorous evidentiary requirements." Boston Beer Co., 9 F.2d at 181. The plaintiff must not only show that it used a personal name as a trademark, but that a "substantial portion of the consuming public associates [the name] specifically with [its] business." Id. at 182. Furthermore, the plaintiff must show that these consumers base purchasing decisions upon seeing the trademark (i.e. the personal name) on the product:
To acquire a secondary meaning in the minds of the buying public, a labelled product, when shown to a prospective customer, must prompt the reaction, "That is the product I want because I know that all products with that label come from a single source and have the same level of quality." In other words, the article must proclaim its identity of source and quality, and not serve simply to stimulate further enquiry about it.
Flynn submitted for the summary judgment record a copy of her curriculum vitae and an affidavit in which she stated that she has worked in the robotics field since 1985, has given seventy invited talks and written twenty-nine papers in the field, and has founded a company that designs micro robots. Viewed in the proper light, she claims that this evidence demonstrates that "she has an esteemed reputation and a well-recognized name." This claim ignores the stringent requirements for secondary meaning evidence. "Such 'opinion' testimony by a [party] is considered self-serving and of little probative value." Fay's Drug Co., 842 F.2d at 648. It would be more important to know, for example, how likely it would be for the average consumer of books like Mobile Robots to be aware of the papers Flynn cites. It is the mindset of these likely consumers and not simply the strength of her publication record in the abstract that matters in determining whether secondary meaning has attached. Moreover, Flynn declared that the authors intended to market the book to "a wide audience" from "high school age to Ph.D. level researchers"; therefore, it is this broad class of consumers and not a select subset of academic "insiders" that matters for secondary meaning purposes. Flynn failed to produce any evidence demonstrating that this extended group of consumers is aware of her academic achievements.
I have written a number of articles dealing with the protection or lack thereof of personal names within the arena of domain name disputes. These issues are similar in that, in order to claim rights under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), a claimant must show that it has at least rights in trademark in and to his or her name, although there is no requirement under the UDRP that the claimant have a registered trademark. Read “Julia, Jimi and Cybersquatting: An Update” and “Bruce and Julia: A Domain Name Case Study.”
As the Court said in Peaceable Planet:
Or to say it another way still: trademark law (as well as other forms of intellectual property and other law) takes more than memorizing rules.The scope of a rule is often and here limited by its rationale. Or, to make the same point differently, one way of going astray in legal analysis is to focus on the semantics of a rule rather than its purpose.
It requires a finesse of the mind.
Copyright © 2004 Ivan Hoffman. All Rights Reserved.