Navigating Lifecycle of Eponymous Brand (Part 1)
In Steven Covey's book, 7 Habits of Highly Effective People, he espouses the idea that "all things are created twice … a mental (first) creation, and a physical (second) creation" (see link here). This idea applies aptly to not just creating personal success, but also to brand building: first, you envision the value you want the brand to convey (the mental creation); then you plan to execute on that vision (the physical creation).
In the context of eponymous brands, this process is particularly important since the brand is necessarily intertwined with personal reputation; personal reputations can be made or destroyed based on commercial activity of an eponymous brand (e.g., Kathie Lee Gifford's 1996 sweatshop scandal questioned her character), and commercial brands can rise or fall based on the behavior of its namesake (e.g., Paula Deen's 2013 admission of using a racial slur during a 2013 deposition resulted in the Food Network cancelling her contract).
It is also important to consider that business dealings may restrict the ability to continue using a personal name in a commercial sense. For example, the designer Kate Spade sold her brand to Liz Claiborne in 2006, and now designs under the name Frances Valentine. Also, family-owned and operated businesses can achieve lasting success or devolve into chaos over control of the family name – such as when the Gallo wine empire was mired in internecine turmoil in the 1980s. As illustrated by these few examples alone, and given what can be on the line, developing personal name brands should be approached thoughtfully and preferably with the guidance of legal counsel.
There are at least three distinct seasons in the lifecycle of an eponymous brand: (1) Choosing the Brand, (2) Commercialization, and (3) Legacy of the Brand. In this article, we discuss the first: Choosing the Brand.
Choosing the Brand
There are many reasons to adopt a personal or family name as a trademark. For example, the brand may be developed to capitalize on name recognition when moving into a new sector – such as celebrity chefs/television personalities who open restaurants (e.g., Emeril Lagasse, celebrity chef and restaurateur). Eponymous brands may also be common practice in the industry – such as in the fashion space. Finally, such brands may be selected to build on established goodwill to expand into new geographic areas or product lines. Whatever the motive, deciding to proceed with an eponymous brand involves aligning goodwill and intent regarding the personal name with branding goals.
A. Clearing the Name
Regrettably, none of us has an inalienable right to use our personal names for any purpose at any time, and this reality is never more apparent when personal names are used as trademarks. Even if one bears the last name McDonald, you would likely be precluded from using your own name in the food services industry. Similarly, even if a business has operated in a geographic location for generations under the family name (without federal registration), the ability to expand that business to a new town may be limited by a third-party’s trademark rights in that new location. The same logic applies to extending the brand into new verticals or even industries. For example, Italian shoe designer Salvatore Ferragamo challenged NFL quarterback Vince Ferragamo's 2010 foray into winemaking.
To understand any limitations you may face in using or registering your brand, carefully clear eponymous brands as you would any other new trademark or business name. Once a significant investment in an eponymous brand has been made, fighting allegations of infringements, offensively or defensively, can distract management, deter growth, and potentially cripple a business. Given the emotional connection to eponymous brands, it is important to address any issues with use/registration on the front end.
PRACTICE TIP: When clearing a personal name as a trademark, one should cast the "search net" far and wide to ensure there aren't any registered or unregistered uses of the same (or similar) name for a wide range of products and services. Many well-known namesake brands license their names and even endorse products beyond the natural scope of the core business, creating additional risk for these types of marks.
B. Registering the Name
Trademarks that are comprised of only surnames are not registrable on the Principal Register (the primary register with the U.S. Patent and Trademark Office), absent a showing that consumers associate the surname with the source of the products. However, trademarks comprised of first and last names are considered to be inherently distinctive, and immediately registrable on the Principal Register. The distinction is important, as it can be easier to enforce trademarks on the Principal Register.
PRACTICE TIP: Particularly when adopting a surname as a brand, consider adopting and exploiting, early on, other forms of indicia, such as domain names, social media user names, and even key word advertising to accelerate the brand's market recognition. Also, develop a consistent and proactive enforcement strategy to avoid encroachment by others with the same/similar name.
Once the decision to adopt a personal name trademark has been made, and that name has been cleared for commercial use and federal registration in all relevant categories of goods/services, and applications have been filed to secure priority, the focus next turns to building and growing the business behind the brand. Check back next month for a discussion of Commercializing the Brand in part two of this three-part series on navigating the lifecycle of eponymous trademarks.