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.)

"The name is Bond, James Bond," said Sean Connery, Roger Moore, and Daniel Craig, among others, countless times in film, as part of the famous 007 series. An ideal name for a secret agent. A name and line not easily forgotten, as brands and taglines should be.

And then, there are some names you’d like to forget, but can’t, especially if they are associated with personal injury lawyers, who probably "suk" even more than trademark lawyers (who merely have been dubbed the most basic figure), right?

Well, using Dan’s post from Friday, as a catapult (or, perhaps a hole-digger) for discussion, I’m thinking the jury is still out on 3 being the magic number, at least as it pertains to the 3 letters forming a rather rare surname (Suk) and the same number of words forming a curious (and hopefully misdescriptive) law firm name (Suk Law Firm), so, sorry Dan, I’m not sure there is any way to pull a rabbit out of the hat on this troubled tripartite branding combination:

Seeing the signage here, I’m thinking that any new or temporary receptionists at this law firm automatically require more intense phonetic training than your average law firm receptionist. In fact, this little gem (hat tip and photo credit to Max) probably rivals those spotted by Mark Prus in his recent guest post entitled: "Name Development Faux Pas, a.k.a. What Were They Thinking?!"

Ironically, the tagline for the Suk Law Firm is composed of these 3 words too: "Think About It."

So, I’m assuming they followed their own advice and did, but nevertheless, it probably came down the same way the Drury Inns name did, since the surnames in question no doubt have a great deal of goodwill associated with and emotional attachment to their founders. Might a naming consultant, nevertheless have said, forgetaboutit?

In any event, one of the things I’d be inclined to think about is how the brand name might sound when spoken, especially in a world where word-of-mouth marketing is key, and also how it might be perceived by those in the relevant public, given the possible truncation from its four-letter cousin. Apparently Suk, when the surname meaning is intended, sounds like "cook" or "book," not "pluck" or "stuck." Oh, the things phonetic punctuation symbols can and should be used to do, to help guide the intended meaning by signaling long and short vowel sounds! 

On a related note, it reminds me of the unintended meanings that can result when critical spacing is omitted, as was the case, between the branded words "LA  MER" to yield LAMER.

Although mispronouncing the Suk surname may be bad enough, when one examines the derivation of the name, it doesn’t appear to improve much on the meaning front either, since Suk apparently is not only a nickname for a "powerful, unyielding man," but also a "stubborn, awkward one". Hmmm, it’s all beginning to make sense now.

For those with any modicum of lingering interest, the Trademark Office’s treatment of SUK appears below the jump.

Continue Reading Tripartite Branding Trouble: The Name is Suk?