Introduction
Fashion was seen as an intangible part of a culture that deals with constantly changing clothing trends. Nonetheless, fashion has become economically crucial and grown into a separate industry that operates for billions of dollars. There was a specific need in certain legal rules that could regulate numerous issues which appeared. Fashion law, which is a separate legal discipline, is aimed at dealing with “the day-to-day business problems the fashion industry” faces (Jimenez & Kolsun 2010, p. 3).
There are numerous issues related to fashion and business. However, one of these concerns has attracted considerable attention. The use of a personal name as a trademark is one of the most disputable issues now. The present paper dwells upon this aspect of fashion law and reveals the major peculiarities of the issue and existing approaches utilized to address it.
Personal Names as Trademarks
What is a Trademark?
First of all, it is necessary to consider the essence of the trademark. Pitzer (2011, p. 310) notes that trademarks “identify and distinguish” products and trademark law is aimed at protecting trademarks and retaining “value in the mark”. Trademarks are regarded as potent tools to communicate the company’s message concerning the product. Thus, in only one word or a phrase, companies can reveal the essence of the brand. For instance, Nike bears a potent message and communicates the idea of winning and being the winner. More so, the sign of this trademark has become recognizable and the famous tick is associated with sports footwear.
Admittedly, companies try to protect their trademarks which are their most valuable assets. The defense of trademarks is associated with the concept of confusion or rather absence of confusion. According to the Lanham Act, trademark infringement occurs when products under a trademark are likely to be confused with other similar products (Pitzer 2011). Noteworthy, it is often accepted that products pertaining to different industries can have similar trademarks. The main point here is that such similarity will not confuse the product’s consumers.
It is also important to add that companies try to create unique trademarks as such marks are more distinctive. Pitzer (2011, p. 313) mentions four categories of trademarks: generic, descriptive, suggestive, and fanciful. Hence, some trademarks describe the product in some way, while others only ‘suggest’ what the product can be. Clearly, there is nothing more unique than the personal name of the person who created the product. In the fashion industry, personal names are often used by companies and designers.
Personal Name as a Trademark
However, it is not that easy to make a personal name a trademark in the world of fashion. First, the name should acquire additional meaning. In other words, a personal name should be associated with some products before it can be used as a trademark. Jimenez et al. (2010) note that it can take months and even years for a person to become associated with particular products. At the same time, the researchers emphasise that once a designers makes his/her personal name a trademark, it becomes his/her “most valuable” asset (Jimenez et al. 2010, p. 8). Designers often understand that their trademark can be attractive for investors and can be sold. However, people who try to make their personal name a trademark often forget that they have to be very careful especially when selling the trademark and conveying all rights to use the trademark.
Major Issues Associated with the Use of Personal Names as Trademarks
Conventional Scenario
Thus, Pitzer (2011) describes a conventional way of creating and selling a trademark which is also a designer’s personal name. Hence, a talented designer starts creating his clothes or footwear and so on. The designer’s name soon becomes associated with his/her products and is made a trademark. As a rule, talented designers lack money and have to address investors. Investors understand that trademark is a valuable asset and try to buy the trademark and obtain all possible rights to use it. Thus, the designer does not solely own all the commercial rights to use his/her name. Inevitably, the company has “both the right and the duty to protect” the trademark to retain its value (Pitzer 2011, p. 317). As a result, the designers will not be able to use /her name in a different enterprise. The conflict between the company and the owner of the personal name often leads the parties to the court.
Some Cases Related to Trademark Infringement
It is possible to consider some cases to understand the way similar issues are resolved. Jimenez et al. (2010, p.8) provide an example of Paul Frank Industries, Inc. (PFI) that sued Paul Frank Sunich, who was its “name-sake designer”. PFI accused Sunich of violating their trademark rights when he had used his name during the sale of his new collection of T-shirts. The court found that the company had invested a considerable amount of funds to promote the trademark and, hence, Sunich could not associate himself with the trademark anymore. Therefore, Sunich has no right to use his name in such a sphere as clothing.
Another famous case concerning the use of a personal name as a trademark is that of Joseph Abboud who sold the rights to his trademark “Joseph Abboud” to JA Apparel. He also signed a non-compete agreement that expired in 2007. However, in 2007, the company found out that Abboud was going to launch a new line of men’s clothes and was going to use the following tagline, “a new composition by designer Joseph Abboud” (as cited in Jimenez et al. 2010, p.9). Initially, the court claimed that Abboud violated the agreement and he was enjoined from using his personal name as regards products, services, or any goods. Nevertheless, on appeal, it was found that the agreement did not contain a precise description of rights conveyed to the company. As a result, Abboud was allowed to use his name in connection with products or services, but he was enjoined from using his personal name as a trademark.
Montalvo (2013) also considers the case of “Sigerson Morrison”, a trademark created by a couple of designers who sold the rights to the trademark to Marc Fisher. However, the designers were not satisfied with the investor’s actions as the former were afraid that the latter focuses on his existing brands and pay little attention to the promotion of “Sigerson Morrison”. Eventually, the designers did not have the right to use their names in the fashion industry.
Approaches Used When Considering Such Cases
As has been mentioned above, the major focus is made on whether there is confusion. Thus, in the three cases mentioned above, as well as any other case concerning trademarks, the court has to decide whether there can be confusion between the products created by the company owning trademark rights and goods created by the bearer of the personal name. This is the major reason why designers are enjoined from using their names in a commercial context and in the fashion industry. Otherwise, there are chances that existing trademarks can lose their value as newer products can gain more popularity.
Furthermore, the court also takes into account the amount of effort and money invested into the promotion of the trademark by both sides. Clearly, the agreement between the two sides plays a key role in the process. However, in practice, in the vast majority of cases, both sides fail to foresee all possible scenarios and have to go to court. It is also necessary to note that designers often lose cases as their rights are less secured.
Gaps and Limitations
It is important to add that there are numerous gaps in legislation when it comes to the use of personal names as trademarks. For instance, Bone (2012) stresses that the approach of the likelihood of confusion is inadequate as it often leads to incorrect conclusions. The approach is based on a test aimed at identifying the likelihood of confusion. Nonetheless, the test needs reforming as it does not give coherent and precise data. Moreover, Bone (2012) believes that the test should not only focus on the likelihood of confusion but identify possible harm which can be generated by this confusion.
Montalvo (2013) stresses that the rights of individuals should be secured as a person can lose his/her name. The researcher claims that it is essential to introduce regulations aimed at controlling relationships between parties when it comes to the use of personal names as trademarks. Furthermore, it can also contribute to the development of certain regulations in the terrain of agreements that will be more sophisticated and detailed, and ethical.
Conclusion
On balance, it is possible to note that issues concerning the use of personal names as trademarks have acquired significant attention as fashion became an important industry. The approach used nowadays is based on the concept of the likelihood of confusion. However, recent cases have proved that the approach has numerous flaws. Besides, fashion law is also characterized by some limitations which are yet to be addressed.
Reference List
Bone, RG 2012, ‘Taking the confusion out of “likelihood of confusion”: toward a more sensible approach to trademark infringement’, Northwest University Law Review, vol. 106. no. 3, pp. 1307-1378.
Jimenez, GC & Kolsun, B 2010, Fashion law: a guide for designers, fashion executives and attorneys, Fairchild Books, New York.
Jimenez, GC, Kolsun, B, Gottlieb, G & Misthal, M 2010, ‘Fashion law: key issues in a new legal discipline’, Fashion and the Law, vol. 19. no. 2, pp. 4-10.
Montalvo, FM, K 2013, Refashioning the right of publicity: protecting the right to use your name after selling a personal name trademark, Web.
Pitzer, AB 2011, ‘Unfashionably late: protecting a designer’s identity after a personal name becomes a valuable trademark’, Southern Illinois University Law Journal, vol. 35. no. 1, pp. 309-333.