But It’s My Name

In the 1980s, Ernest and Julio Gallo got a ruling that prevents their youngest brother from using his own name, JOSEPH GALLO, as a trademark to sell cheese.

In 2016, the estate of Frank Zappa sent a cease and desist letter to Frank’s son, Dweezil Zappa, to make him stop using ZAPPA PLAYS ZAPPA in connection with his band’s tour.

Teresa Earnhardt, the widow of  NASCAR® legend Dale Earnhardt,* has been involved in litigation against her stepson, Kerry Earnhardt, over Kerry’s attempt to register EARNHARDT COLLECTION for home building and furniture since 2012.

What do you do when you can’t even use your own name? How can that even happen?

In general, trademarks that are “primarily surnames” are quite weak and are difficult to register. But, sometimes, a trademark that’s primarily a surname becomes famous and through its fame gains strength and becomes both registrable and defensible.

We’ve seen this before with women named Tiffany wanting to use their name to sell jewelry. The most famous example is probably MCDONALD’S which was no longer owned by brothers Maurice and Richard McDonald.

What can you do if this happens to you? First, I strongly recommend that you have a non-famous name, but if your name happens to be APPLE, I suggest you just use something else as a trademark.

 

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* Teresa Earnhardt is the owner of 8 registered trademarks that include EARNHARDT for a variety of good and services, including key ring, pocket knives, license plate frames, entertainment services relating to racing, toys, decals, clothing, beverage containers, towels, pennants, charitable services, CDs, watches, among other products and services.

Other members of the Earnhardt extended family own other trademarks:

Jeffrey Earnhardt, Kerry’s son, uses JEFFREY EARNHARDT.

Kerry owns a registration for EARNHARDT OUTDOORS for entertainment services relating to outdoor activities.