Earlier last week, Charles E. Entenmann of the storied baked goods company Entenmann’s passed away at the age of 92. Charles had a hand in turning his family’s New York-based bakery into a national brand after his grandfather, German immigrant William Entenmann, founded a bakery in Brooklyn in 1898.
It is not uncommon for a company to adopt a trademark as a namesake for its founder. The AIR JORDAN brand borrows its name from former superstar athlete Michael Jordan, the clothing company ABERCROMBIE & FITCH is named after its founders David Abercrombie and Ezra Fitch, and FORD MOTOR COMPANY is named for Henry Ford, to name just a few. And the list goes on and on. An entrepreneur’s desire to bestow their own name on their business is hardly surprising, and it aligns with the basic premise of trademark law, which is for consumers to easily distinguish and identify goods and services that derive from different sources. However, the use of one’s own name does not in all cases provide the best avenue to create a strong and distinguishable brand, at least in part because a personal name may be common to many different individuals.
It is clear from the above examples that a personal name can be used as a designation for a trademark. In addition to using as a trademark, a showing of “secondary meaning” is required to register or enforce a personal name as a trademark. “Secondary meaning” is a term that refers to when a trademark has acquired distinctiveness and has made an impression on the purchasing public. Therefore, registration of a personal name mark on the Principal Register is reserved for those marks that the public perceives as both a personal name and a designation for the underlying goods and services.
Inherent in using a personal name as a trademark is the uncertainty of multiple market entrants using an identical name as a trademark. This uncertainty is further exacerbated when a first name is selected as a trademark. For example, JOE’S PIZZA on Broadway down the street from my office in midtown Manhattan is renowned for its delicious pizza and became even more recognizable after the brand was featured in Sam Raimi’s Spider-Man film starring Tobey Maguire. While there are countless pizza shops nearby, there is literally a line out the door every single time I walk past JOE’S PIZZA.
Personal name marks are desirable and can be very valuable, but it may be difficult to perfect your trademark rights in a personal name, and even more difficult to protect those rights due to competitors across the country who select the identical personal name mark.
If you are considering using a personal name as branding for your business, please contact me at email@example.com to discuss your branding strategy.