DuetsBlog Collaborations in Creativity & the Law

Registration of a Very Personal Brand Name

Posted in Advertising, Articles, Branding, Marketing, Mixed Bag of Nuts, Search Engines, Social Media, Social Networking, Television, Trademarks, USPTO

How much do I believe in federal registration of trademarks and brand names? Well, this much:

I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.

That mindset helps explain why we stuck with the suggestive name of this blog, even after the experts recommended against it several times, for SEO and other reasons. They do agree now.

Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:

Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.

A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:

“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”

“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”

Fortunately, I’m surrounded by really bright, passionate intellectual property and trademark attorneys, and in this case, our Tucker Chambers came to the rescue, with this winning response.

And, thankfully Tucker had some decent facts to work with, especially given kind commentary of some generous giants from both the legal and marketing fields, two of our core audiences.

Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.

I’ve never professed to resemble a purple cow, but my mother and father did teach me to follow the beat of my own drum, after taking in a variety of different perspectives to settle on my beat.

So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.

Keep in mind, personal brands can go beyond an actual name to embody a non-verbal image too, where consent of the individual so identified is of record at the USPTO, hello Ralph Lauren:

Personal brands also may include nicknames, like Mr. Wonderful aka Kevin O’Leary from Shark Tank fame, who is seeking registration of Mr. Wonderful for roasted nuts, hello Wonderful:

 

So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.