Lady Gaga is currently one of the biggest selling recording artists in the world, the most followed person on Twitter with almost 15,000,000 million followers, and generates millions in revenue from her recordings, tours, and merchandise. So when Excite Worldwide, a company unaffiliated with Lady Gaga, attempted to register the name LADY GAGA as a trademark for their cosmetics and jewelry line, Lady Gaga responded by filing a lawsuit.
What are the rules about names as trademarks, and do they apply equally to famous names and the names of regular people?
A few weeks ago, I posted an article about descriptive trademarks. Names, as trademarks, are generally treated as though they are descriptive unless they have “attained a secondary meaning,” which is when the public regards the term as having been identified with one seller.
The United States Patent and Trademark Office has four bars to trademark registration that might apply to personal names. The primary register of trademarks is barred to a potential trademark when:
- A mark is “primarily merely a surname.”
- An applied-for mark is the name of a living individual.
- A mark falsely suggests a connection with “persons, living or dead.”
- A mark criticizes “persons, living or dead” or brings them into contempt or disrepute.
A Mark that is “Primarily Merely A Surname”
These marks are disqualified unless they have become connected with the applicant’s goods in the eyes of the public. MCDONALD’S and LOWES are examples of marks that are primary surnames that have become distinctive enough to allow registration and fully trademark protection. Surnames include not just family names, but also terms that resemble or incorporate family names. Five factors are considered in determining whether a mark is primarily merely a surname.
- The rarer the surname, the more likely the name will be protectable as a trademark.
- If the applicant is connected to anyone with the surname they are trying to register, this is considered “strong evidence” that the public will see the term as a surname and be rejected.
- If the term has some other known meaning, the mark is less likely to be found to be primarily a surname. Examples include “green,” “strong,” or “king.”
- If it has the “look and feel” of a surname, this factor weakens the argument for registrability. This factor is significantly subjective.
- If the mark is a surname, but is presented in a stylized fashion so as to create a separate commercial impression, the mark is more likely to be registered.
Name of a Living Individual
A trademark may not be placed on the principal register if it is the name of a living individual, unless that individual provides express written consent. Even with consent, the proposed trademark will still be subjected to the “primarily merely a surname” analysis to determine if the name can be protected.
False Suggestion of a Connection
If the proposed trademark attempts to make a connection with a person, living or dead, it will not be registrable if the connection is fabricated. Usually this factor comes into play with someone famous. If the mark to be registered is the name of a famous person, the public may believe the product or service has been endorsed by the famous person. If consumers are likely to be confused that the product or service is associated with the named person, the trademark application will be denied.
If the proposed trademark criticizes, disrespects, or subjects to disrepute a person, alive or dead, it will not be able to be registered.
Special Treatment for Author, Performing Artist Names, or Pseudonyms
As a general rule, an author or performing artist’s name does not function as a trademark. However, if two criteria are met, the name may be registered. First, the name must be used on a series of written or recorded works. The minimum amount of works that the mark must appear on is two.
Second, if there is evidence that the name functions as a “source indicator” and does not just identify the author or artist, it may be registered. This can be shown through one of two ways – either that the author or performer controls the use of her name and the quality of the works that bear her name, or through evidence that when the public sees the name, they recognize it and know what they’re getting.
An author or artist’s pseudonym can function as a trademark as well, if it meets the criteria above. The USPTO does not make a distinction between real names and assumed names.
What Does This Have to Do With Lady Gaga?
Excite Worldwide’s application has been initially rejected by the USPTO for two reasons. First, they attempted to obtain a trademark registration for a mark that comprises the name of living person without her consent, regardless of the fact that Lady Gaga is not her legal name. Second, Lady Gaga is in no way connected with the cosmetics and jewelry that Excite Worldwide is selling. This is where Lady Gaga’s fame comes into play, as many people who are familiar with Lady Gaga, would believe she was connected with the products and may be induced to buy the products on the basis of that connection.
Why did Excite Worldwide attempt to register the mark LADY GAGA in the first place? Maybe they were ignorant about trademark law. More likely, they may have understood that this attempt to register the mark would prevent the real Ms. Gaga from registering her stage name for these products until this legal issue is resolved. It’s possible that Excite figured they may be able to get Lady Gaga to simply pay them to withdraw the application or assign the rights in the application to her. The fact that she has filed a lawsuit, however, may suggest that she is not interested in a quick settlement. We’ll see where this one goes – stay tuned…