With the Oscars coming up in less than a month, it seems like the issue of “celebrity” trademarks is a hot topic in the media. For example, many news outlets (such as here, here, here) are covering Meryl Streep’s application to register her name. Her application (Serial No. 87765571) was submitted last month for a variety of services, including entertainment services, personal appearances, speaking engagements, and autograph signings.
It has become increasingly common for celebrities to seek federal trademark registrations for their names, often in connection with entertainment services, to provide greater protection and enforcement ability against authorized third-party uses.
Another recent example is Sean Connery’s application to register his name (Reg. No. 5015683), which was covered in the news over the past couple years. He had to overcome some obstacles, including two Office Actions rejecting his specimens of use (here and here), but he was finally able to reach registration after submitting a third substitute specimen.
Interestingly, trademark rules and precedent allow registration of personal names as inherently distinctive, without the need to show “acquired distinctiveness” (i.e., evidence, such as longtime exclusive use, showing consumers recognize the mark as a unique source indicator). This rule differs from the common law rule, in which acquired distinctiveness is required. Christopher Brooks, 93 U.S.P.Q.2d 1823 (TTAB 2009); McCarthy on Trademarks §13:2; TMEP § 1301.02(b). It also differs from the bar against registering mere surnames (i.e., just the last name, rather than the full name), without acquired distinctiveness. TMEP §1211.01.
Nevertheless, it makes sense to take advantage of this unique rule for federal registration of personal names, if there is a good business reason for doing so–which there often is for celebrities.
What do you think about trademark registration for personal names? Do you think celebrities have gone too far with trademark applications in connection with their name (see a list here)? For example, Taylor Swift has over 50 trademark registrations for her name or her initials.
Any predictions for the biggest winners at the Oscars? (I’m betting Shape of Water wins Best Picture and Best Director.)