It is a common misperception that people have an absolute right to use their own names in connection with their business or the sale of merchandise. A senior user of a personal name which has acquired secondary meaning will typically be given priority over a junior user of even his or her own personal name if the result will be to avoid confusion.
In these circumstances, the law does not distinguish between corporations and natural persons or between trade names and personal names in its quest to prevent consumer confusion and has often held that a person has no right to confuse the public by engaging in a business under his or her own name if that name is identical to a well-known trade mark.
However, there are options to distinguish one's personal name from a senior user of the identical name. US trade mark law provides certain qualifications on someone's right to use their own name to avoid a likelihood of confusion with a senior user of the same name.
Specifically, courts have required certain modifications to the use of a personal name in order to avoid confusion, namely: the use of one's entire name (rather than, for example, just the last name), variations in font or typestyle, the inclusion of additional word elements and, sometimes, even the use of a disclaimer.
Therefore, if an individual residing outside of the United States is interested in doing business in the United States under his or her personal name, that individual would be wise to consult US trade mark counsel to ascertain whether the personal name is available for use (and, as appropriate, registration) in the United States in connection with the type of business at issue.
It is further suggested that the individual interested in using his or her personal name as a trade mark provide his or her US counsel with all facts surrounding the proposed use, including any prior business use of the personal name.
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| Karen Artz Ash and Bret J Danow |
Katten Muchin Rosenman LLP
575 Madison Avenue
New York
New York 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com
