If you build a brand or reputation around your own name, what happens if a third-party owns the trademark registrations to that name, rather than you? It’s a question that has hit the headlines once more, following news this week that a chef from this year’s BBC's Great British Menu is locked in a row with his former restaurant, which had trademarked his name, and is selling the rights to his recipes.
While chef James Cochran left his self-titled restaurant in London in early 2018, the company behind the restaurant continues to operate it under the same name (‘James Cochran EC3’). The dispute arose after Cochran sought to market his new restaurant and found that he was unable to use his own name.
It’s not the first time that such a scenario has occurred. While choosing to build a brand around your own name does have many benefits, it also carries a certain number of risks; especially if a third-party owns or acquires the trademarks. What should you do, therefore, if you wish to name your business after yourself?
Learn from those who have gone before
There are many examples of 'famous' names that have fallen foul of trademark law. Perhaps the most famous of them all, the Elvis Presley trademark has been the subject of multiple court cases over who owns or has the right to use the name. In the UK, it was held that the name had been used for so many merchandising products by so many companies that it lacked the ability to distinguish the goods of one company from those of another company.
The fashion (e.g. Louis Vuitton), leisure (e.g. Hilton hotels), and food and drink (e.g. Kellogg’s) sectors provide many examples of successful brands that have been built on the founder’s name. However, there are plenty of cautionary tales, too, from family in-fighting, such as with Gucci and Asprey, to loss of name after business sale, as both wedding dress designer Elizabeth Emanuel and fashion designer Karen Millen found to their frustration.
Check your name meets the requirements for trademark registration
Here, much will depend on the relative distinctiveness of a name or surname for use in identifying a particular owner’s products or services; in other words, the more unusual your name, the more likely it may be deemed to be distinctive. (John Smith’s Brewery providing here the exception that proves the rule, but then the brand name dates back to the 1800s.)
Similarly, the more common the name, the more likely it is that someone else will have got there first (see, for example, the spat between Kylie Jenner and Kylie Minogue).
Even if the name is available, it is not guaranteed that the trademark office will accept the trademark application – your name will need to fulfil the same criteria as any other intended trademark to be successful. Here, you may be able to improve your odds by combining your name with a distinctive logo for example.
Strategies for success
- You should always search to check your name is available for use and registration before you start a business under the name.
- If you want to be famous, register your name (if possible) before you become famous to stop others jumping on the merchandising bandwagon.
- Even if you don’t want to be famous, if your name is your business name and if the name is capable of being registered, you should do so. It's an asset of the business and a registration could increase the value of the company to a potential buyer.
- If you sell your business, make sure your name registration is not sold with it – if the name is the essential value of the business, you can always license it to the new owner.
Refusals after the fact
If you have been refused registration of your name as a trademark, either for the reason that it was not considered distinctive or because it was already taken, you are not prevented from using your name for ordinary business purposes. However, it is advisable to consult with a trademark attorney to ensure that your use of the mark is not infringing the existing registered right.
Your attorney will also be able to advise you on the steps that you can take to obtain protection for your business name, including any adjustments you may need to make in order to register it as a trademark. Contact us below if you require further information or support.