Q: Can a celebrity apply for trademark protection based on his or her celebrity status?
A: Yes. Celebrities can and often do apply for protection from the United States Patent and Trademark Office (USPTO) based on the distinctive nature of their name and talent. For example, Frank Sinatra obtained trademark protection based on his first performance as a singer in 1935. In one of perhaps the greatest understatements included in the USPTO records, Sinatra’s name is listed on the Principal Register at the USPTO under the classification of “Entertainment Services - Namely, Presentation of Musical Performances Rendered by a Singer.”
Q: How does a name or term qualify as distinctive?
A: A name or term qualifies as distinctive if it sets its product apart from all other common products with the same name. For example, the name “Madonna” has existed for thousands of years, but Madonna, the star, connotes an entire industry of music, videos, and movies. The designer, Ralph Lauren, has an entire marketing campaign centered simply around his name, which is used to evoke sophisticated images of adults, children and pets frolicking on sunny beaches, in cozy winter cabins and on polo grounds. It is an image used to sell a lifestyle through its products.
Q: Why would a celebrity seek trademark protection?
A: Primarily, celebrities seek trademark protection to protect their financial stake in any and all marketing done with the use of their likeness and also to guarantee that their likeness is not used in any manner, which will dilute the coveted image.
Q: How does a mark become diluted?
A: Dilution occurs when a mark is used in such a manner as to cheapen the star’s image, without the star’s consent. If Madonna chooses to affix her likeness to sexually explicit material, that is her prerogative, but an owner of a strip club cannot put Madonna’s likeness on the marquee to bring in customers and profit from the star’s celebrity status without her consent. Ralph Lauren most likely would not want his name associated with people or products that might reflect poorly on the image he tries to convey. The innuendos, which would arise from such association, could ruin the star’s image, severely diluting the worth of the mark.
Q: Do only individuals qualify for trademark protection?
A: No. Nipper®, the popular black and white terrier used since 1900 by RCA-Victor was registered as a trademark in 1900 by the founder of the Victor Talking Machine Company. In the 1980s, Nipper® was introduced to his puppy companion, Chipper®, who has become the latest RCA character to receive trademark protection.
Q: Can regular names, first or last, be granted trademark protection?
A: It depends. Generally first names and surnames are not granted trademark protection. However, if an otherwise common surname takes on a distinctive quality, or if a famous name develops a “secondary meaning” under the trademark regulations, then that name may be granted trademark protection.
Q: What is a secondary meaning?
A: Secondary meaning describes the situation that occurs when common names or terms acquire a specific meaning through continuous, exclusive use throughout an industry. An example of an already famous name which has acquired a secondary meaning throughout an industry is Newman’s Own® brand of salad dressings and lemonade. While Paul Newman, the actor, already had a valid claim on his name as a celebrity, his creation of a line of gourmet food products qualifies his name as having a secondary meaning within the food industry. As a result, Newman’s Own® takes on a distinctive meaning and qualifies for trademark protection within that industry.
Q: Is a celebrity always successful in defending his or her right to trademark an image of the celebrity?
A: No. There is an ever-present conflict between the celebrity’s ownership rights in his or her image and the right to freedom of expression protected by the First Amendment. The celebrity has a right of publicity, which enables the celebrity to prevent his or her image from being used in an unauthorized manner for profit. However, artists’ works are traditionally held to be protected under the First Amendment. In 1998, Tiger Woods’ management company, based in Cleveland, Ohio, sued an Alabama artist for marketing Tiger Woods’ image in a limited edition set of prints which depict Woods winning the Masters’ Tournament in Augusta, Georgia. The United States District Court for the Northern District of Ohio held that Woods’ image was not protected by trademark law and that the First Amendment permits the artist to use, and profit from the use of, the image. Woods appealed the decision to the Sixth Circuit United States Court of Appeals, who affirmed the district court's opinion in 2003.
Law You Can Use is a consumer legal information column provided by the Ohio State Bar Association. This article was prepared by Youngstown attorney Rebecca M. Gerson, whose practice focuses on corporate, construction and trademark law.