September 04, 2008
Intellectual Property Alerts

Trademark Office Rejects General Public Policy Permitting Individuals To Register Their Names as Trademarks
by Cyrus Wadia

Today, the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board rejected the concept of a strong public policy in favor of allowing individuals to use their personal names as trademarks.

In re SL & Training Stable, Inc. , 88 USPQ2d 1216 (TTAB 2008) involved a well known fashion designer Sam Edelman's attempt to register a trademark in his name SAM EDELMAN for certain fashion goods.  The mark was initially refused by the Trademark Office on the grounds that it was likely to be confused with a prior registration for EDELMAN for similar goods by an unrelated company.  In its response, the trademark applicant argued that there was no likelihood of confusion because of a strong public policy favoring permitting individuals to use their personal names.  The TTAB found no such policy anywhere in the caselaw, holding that "the fact that SAM EDELMAN is an individual's name does not give applicant an unfettered right to use that name if it conflicts with a previously registered mark."  (Id. at 4.)  The TTAB therefore upheld the Trademark Office's initial refusal on the standard likelihood of confusion analysis.

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