Can a celebrity trademark their name based on their celebrity status? Absolutely. Celebrities frequently apply for protection from the United States Patent and Trademark Office (USPTO) based on the distinctive nature of their name and (sometimes questionable) talent. Celebrity almost always brings immediate branding opportunities: capitalizing on the celebrity status of one’s name to market and sell clothing lines, perfume and home décor. This applies to actors, singers, artists, writers, and performers of all types. Unfortunately, even reality stars have certain rights to protect their names under trademark law.
A celebrity trademark can be a combination of words or designs that allow consumers to distinguish the goods or services of one person or company from others in the consumer marketplace. Trademarks are initially established by actually using the mark in commerce. Registering the mark with the USPTO is not a requirement, but registering the mark grants certain valuable remedies to the trademark holder, specifically the right to sue to enforce the trademark and the right to recover damages. As there are significant economic benefits to registering their names as trademarks, celebrities usually tend to register with the USPTO.
A registered celebrity trademark can be a significant financial asset. Celebrities seek trademark protection primarily to protect their financial interest in 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 their image and likeness. Dilution occurs when a mark is used in such a manner as to cheapen the celebrity’s image, without the celebrity’s consent. It is still common for businesses to use a celebrity in advertisements without consent or payment of a licensing fee, implying that the celebrity has endorsed their product.
Celebrities seek trademark protection of their names to establish and protect the financial integrity of their personal name as a brand in commercial markets. Most common citizens will not be able to secure a trademark registration for their personal names. Personal names can only be registered as trademarks if they have acquired what the USPTO calls “secondary meaning.” Secondary meaning occurs when the name has become closely associated with a particular product or service, which can include an entertainment service such as musical performance. Secondary meaning traditionally occurs when common names or terms acquire a specific meaning through continuous, exclusive use throughout an industry. With social media, and 24/7 coverage of events, celebrities are made rapidly and frequently, which also speeds up the time in which a celebrity name acquires secondary meaning.
Although trademark protection exists at the moment the name is used in commerce, there are significant financial and legal remedies available only to trademarks formally registered with the USPTO. Registration grants the right to use the mark nationwide and constitutes nationwide constructive notice to others that the trademark is owned by the party. Registration enables a party to bring an infringement suit in federal court and a potentially recover treble damages, attorneys fees, and other remedies. Finally, registered trademarks can, after five years, become “incontestable,” at which point the exclusive right to use the mark is conclusively established. Registering a trademark allows the celebrity to sue to preclude other people from using the name without permission. Trademark registration also provides the celebrity’s estate with stronger means to protect the economic value of the celebrity’s name after death.
Rising Value of Celebrity Trademark
Trademark registration of celebrity names is taking on added significance with the rise of Internet marketing. The U.S. Congress adopted a law called the Anti-Cybersquatting Consumer Protection Act (ACPA) to protect owners of financially valuable names, including the names of celebrities and businesses, against individuals who would register those valuable names as domain names. The ACPA permits owners of distinctive names and trademarks to preclude others from registering a distinctive name as an Internet domain name without permission. It is important to understand that this right extends even to unregistered trademarks. Therefore, a celebrity who fails to register their name as a trademark with the USPTO can still prevent a third party from registering their name as a domain name without permission.
Many of the most recent cases dealing with use of celebrity names involve use of a dead celebrity’s name. One of the most valuable assets celebrities can pass on to their heirs is their name, but only if done properly. Developing sufficient rights while the celebrity is alive is good. However, registering that celebrity trademark is essential. In addition, it is important to think about what rights the heirs might wish to protect. Is the value in the celebrity’s name, nickname, image? Failure to protect all elements of the celebrity trademark can result in third parties being able to use the image of the (dead) celebrity because rights were not protected.