The tide is turning on the steady flow of celebrities rushing to the United States Patent and Trademark Office to register the names of their children. If you’ve kept up with the applications, you may have noticed that many of them have failed to obtain these sought after federal registrations for exclusivity. It’s evident that these celebrities don’t have a very clear understanding of trademark law, what it protects and how to qualify for its protections.
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs (or mark), that identifies and distinguishes the source of goods or services of one party from those of others. In order to gain federal protection of the mark, you must show use of the mark in connection with goods or services.
The USPTO will allow an applicant to submit a trademark application on a mark that has not yet been used, but it requires a bona fide intent to use the mark before the mark will register.
The problem with celebrities rushing to the USPTO is that their reason for registering their kids’ names is to prevent others from capitalizing off of them. However, they are failing to show a bona fide intent to use the mark in commerce, which is required for registration.
Celebs aren’t paranoid. There are people beating them to the patent and trademark office and filing applications for marks containing the names of celebrity children in hopes of selling them to the parents for a hefty fee. Some poachers are savvy enough to create goods bearing the mark, satisfying the USPTO’s use requirement for registration.
Last year, DJ Khaled filed a lawsuit against a company that registered a number of trademarks using his son Asahd’s name. The trademark office rejected “ASAHD” based on likelihood of confusion with a registered mark. It issued an office action for “A.S.A.H.D. A Son and His Dad” and “ASAHD Couture,” based on the fact that the mark is comprised of a person’s name whose consent is required to register and the registration would create a false connection to DJ Khaled. To date, the applications have been abandoned and DJ Khaled’s lawsuit is pending.
Here are tips to ensure you don’t walk away from the USPTO empty-handed:
- Seek federal protection as soon as possible.
- Consult a trademark attorney.
- Select a distinct mark, and do your research on possible conflicting marks.
- Use the mark. For example, if it’s a service, create advertising materials demonstrating the mark and the services provided under that mark. If it’s a product, make sure the mark is on the packaging or tag or somewhere indicating the origination of the goods.
- If you’re not yet using the mark, really intend to use it. The registration system wasn’t created for you to put a mark on hold in case you decide to do something with it later. You must intend to release a product or service in the very near future.
- Respond promptly and thoroughly to any action from the USPTO.