Can a trademark supersede or preempt a person from using their own name? I remember reading a case years ago where a woman named Sharon Corr sold a product called "Corr's Ginseng Up." (Adolph) COORs (a beer company) sued for trademark infringement and lost. The two names were similar but the woman WAS using her own name. In another case, an investment firm called Haven Capital Management tried, and failed, to prevent a woman named Nancy Havens from naming her investment company after her own (maiden) name. Under what circumstances might a company with an established brand prevent someone from using their own name?
A trademark can't prevent you from using your own name. For example, see Canada's Trademark Act Section 12(1)(a): Subject to section 13, a trade-mark is registrable if it is not a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; However, marks that are "primarily merely" a name or surname can eventually gain distinctiveness in association with a product. In that case, the registration may be allowed. Even so, Section 20(1.1)(a) provides an exception that lets you use your own name, regardless of whether somebody else has registered the mark: The registration of a trade-mark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark, any bona fide use of his or her personal name as a trade-name. The US is similar. See 15 USC § 1052(e), which precludes registration of a mark that is "primarily merely a surname." This relatively uniform treatment of personal names is due in part to the TRIPS Agreement. See Article 24, paragraph 8: The provisions of this Section shall in no way prejudice the right of any person to use, in the course of trade, that person's name or the name of that person's predecessor in business, except where such name is used in such a manner as to mislead the public.
The Adelsaufhebungsgesetz removed “von” and other nobility-related honorifics from names, and made it illegal for Austrian citizens to use such honorifics as part of their own name. It is not illegal for other people to use such nobility indicators, even when addressing no-longer-noble Austrian citizens. Thus, it is not illegal for the English Wikipedia to use this name. Wikipedia also notes the full name without the “von” in the sidebar, although the intro text is arguably misleading. But from a Wikipedia editorial perspective, it would matter by which name he is generally known, even if it isn't the legal name.
If the patent lawyer &quot;hears about&quot; such failed patents from clients, and then uses the client's work and modifies them into successful patent filings, that would seem to be a clear conflict of interest, just as a business lawyer cannot use info learned from a client to make his own business deals, unless the client grants an OK. But if the patent lawyer just hears through shoptalk, or through communication by, perhaps, patent examiners that the lawyer works with, I don't see any conflict of interest, although as the comment by Eugene Styer suggests, there is likely to be enough prior art to make the patent invalid.
Being or not being open source makes fairly little difference in trademark law. If a commercial firm (Yoyodyne, say) had used the name &quot;Portable Network Graphics&quot; and the abbreviation &quot;PNG&quot; in trade, and taken such further steps as would be needed to protect it in the relevant countries, that firm would have a protectable trademark. Note that in some countries, a trademark must be registered to have any protection at all (much of the EU follows this rule). In others, use in commerce can offer some protection even without registration (the US follows this rule). Had this happened (in an alternate reality) Yoyodyne could have sent a cease and desist letter when open source developers started using the mark. If the devs did not cease, Yoyodyne might have obtained an injunction, or damages for trademark infringement, or both. They could also have issued a takedown notie to the site hosting the project. But had Yoyodyne failed to defend the mark effectively and allowed it to become generic, Yoyodyne might have lost all rights to it. Also, had Yoyodyne ceased to use it in trade for a significant period, they might have lost rights. This is a place where the different laws in different countries might lead to different results. Note that &quot;Portable Network Graphics&quot; is rather descriptive, and not particularly distinctive. Descriptive marks, like &quot;Tasty Pizza&quot; generally get weaker protection, while more distinctive marks, such as &quot;LuAnn's Tastee Pizza&quot; are more strongly protected, in general. Again this depends on the country, and the specific facts. In general the first to use, or to register a mark, gets the rights. When one entity is the first to use, but a different one is first to register, things can get confusing, and results will be different in different countries. Note that a Cease and Desist letter is not a legal requirement. It is a threat of possible future legal action, and often an offer to avoid such action if the recipient does as the sender requests. The recipient can comply with the letter, wait for court action, or try to make some sort of compromise deal. Open source projects, as other answers suggest, often choose to comply.
As far as I am aware both these answers are incorrect, but as I am not a lawyer let me quote the World Intellectual Property Organization (part of the UN): Photos of trademarks Unlike copyright law, trademark law as such does not restrict the use of a trademark in a photograph. What it does forbid is the use of a trademark in a way that can cause confusion regarding the affiliation of the trademark owner to the image. If consumers are likely to mistakenly believe that the trademark owner sponsored a photograph, then there may be trademark infringement. For example, if a Nike logo was visible on the t-shirt worn by the boy in our photo-shoot scenario, this could be seen as an attempt to appropriate consumer goodwill associated with the Nike trademark. So, caution is required if photographing someone wearing or consuming a trademarked product. Source: IP and Business: Using Photographs of Copyrighted Works and Trademarks (emphasis mine) So the basic idea is that if the Washington Redskins would not want to be associated with the Biden campaign, they could file a lawsuit claiming that the photo suggests there might be an affiliation between the campaign and the sport organization. In other words, the question one has to ask is: Is there a chance we might benefit in any way from the goodwill associated with the trademark? The way it was explained in a copyright course1 I watched was that: you don't need to worry about a McDonald's in the background of your photo you need to be careful where you use a general photo of a specific McDonald's and taking a photo of a political candidate in front of a McDonald's is not acceptable without permission2 The verdict The biden campaign claimed that A campaign aide told Fox News the logo was removed from the photo because it is &quot;copyrighted&quot; and claimed that such a step is &quot;a very common practice on campaigns.&quot; To my knowledge that are no actual copyright concerns here, but - just like with the aforementioned course - trademark matters often get covered in the same setting as copyright laws, so I have a very easy time believing that this is 'a very common practice on campaigns'. It's incredibly unlikely that for this specific photo the Washington Redskins would have actually claimed that Biden was benefiting from the goodwill associated with their brand (especially considering all the controversy surrounding them), but it's a completely believable general policy. The interesting thing is that they didn't care as much about postings on social media compared to more traditional channels, but this is in line with what I have seen in many companies and organizations. 1 - This course was trying to generalize international law in a way that content producers won't get in trouble anywhere rather than exclusively explain US law. 2 - The example didn't use a 'political candidate' explicitly, but something along the lines of a recognizable public figure who is not just getting a burger
Of course another applicant can use that language. What they can't do is register the same trademark for the same goods or services. If the goods or services protected by a trademark were required to be unique, there'd be no point in having trademarks. Instead, we would have state-sanctioned monopolies. To put it another way, the point of a trademark is to identify the commercial source of particular goods or services. Suppose you sell oranges under the trademark-protected name "Jerzy's oranges," with a goods and services description reading "the sale of oranges." Your registration does not prohibit others from selling oranges; it prohibits them from selling oranges using your name. Any competitor can register a unique trademark to use in the sale of oranges, however, with an identical goods and services description of "the sale of oranges."
A phrase which is too generic or in too wide currnt use to be a valid trademark, may nevertheless be used as a business name or slogan. For example &quot;Good Pizza&quot; is so generic that I am reasonably sure that it could not be registered as a trademark, but a business could use that as a name or slogan. A business that did so would forgo any of the advantages of trademark protection or of having a clearly unique name, but as no one else owns trademark rights to the phrase either, no one could sue such a business over its choice of name, or not with any hope of success. Similarly, if a phrase taken from a meme cannot be registered, no one else can have it as a trademark, and so no one can sue successfully. As to copyright, names, titles, and short phrases are simply not protectable by copyright at all. See the US Copyright office circular 01 &quot;Copyright Basics&quot; which says on page 2; Copyright does not protect ... Titles, names, short phrases, and slogans Circular 33 &quot;Works Not Protected by Copyright&quot; says on pages 2-3: Names, Titles, Short Phrases Words and short phrases, such as names, titles, and slogans, are uncopyrightable because they contain an insufficient amount of authorship. The Office will not register individual words or brief combinations of words, even if the word or short phrase is novel, distinctive, or lends itself to a play on words. Examples of names, titles, or short phrases that do not contain a sufficient amount of creativity to support a claim in copyright include: The name of an individual (including pseudonyms, pen names, or stage names) The title or subtitle of a work, such as a book, a song, or a pictorial, graphic, or sculptural work The name of a business or organization The name of a band or performing group The name of a product or service A domain name or URL The name of a character Catchwords or catchphrases Mottos, slogans, or other short expressions As for ... if we can be sued outside of trademark or copyright reasons Trademark and copyright are basically the only kinds of suit likely to be brought over a business name, logo or similar identification, particularly in the fact patter discussed in the question. (However, see the section on &quot;fraud&quot; below.) Things that are in the public domain are free for anyone to use, not protected against anyone's use. What is not permitted is trying to claim an exclusive right to PD items., by a copyright or trademark claim. The one exception I can think of is that if someone had established a phrase as a trademark, and it later became a meme, then perhaps the trademark owner could sue over uses of it. But with the phrase having become generic, it might well lose any trademark protection. The first thing a plaintiff must do in presenting a trademark suit is establish that the mark is a currently valid trademark, owned by the plaintiff. If the mark is not a valid tm, the suit is over because it has no protection. Fraud A comment states: ... Intentionally misleading others to believe you are a particular party using a non-protectable name, when in fact you are a different party, seems like fraud, and it very much hinges on the name/similar identification. In the fact patter from this comment, the name is derived from a meme, and so there is no other particular person. In that case one cannot plausibly be deceiving anyone into thinking that a business is actually a different business, because there is no business which is uniquely identified by the name. Still, it is possible for fraud to occur in a fact pattern similar to this. Say a local store calls itself &quot;good pizza&quot;, a name not protect able as a trademark, because it is too generic. But it is popular and has a good reputation. Another store, hoping to confuse customers, calls itself &quot;Goode Pizza&quot;. A customer calls &quot;Goode Pizza&quot; and aks &quot;Are you the Good Pizza on George Street?&quot; (which is the location of the first store. An employee answers &quot;Yes&quot; (falsely) and the customer then places a delivery order. That might be fraud. For a fraud case, in most jurisdictions, it must be proved that: A person knowingly made a false statement (or in some jurisdictions an intentionally misleading statement&quot;); with the intention of getting a financial advantage, or depriving another of an advantage or benefit; The statement was material to the transaction (meaning that the other party might well have not agreed to the transaction, or demanded different terms, in the absence of the fraudulent statement); The other party relied on the fraudulent statement; it was reasonable for the other party to rely on the fraudulent statement; and harm was done to the other party as a result of this reliance. Some jurisdictions omit or modify some of these elements. In the Good Pizza / Goode Pizza scenario above, ther is a knowingly false statement. Since the customer asked about the identity of the store, it can be assumed that it was material to the transaction. The imitation of the other store's name suggests an intention to mislead, although more proof might be needed. There was reliance, and it was probably reasonable. What is not clear is the harm done -- additional evidence might be needed on that element. This scenario is, however, rather different from the situation discussed in the question. Note that in the US, trademarks can be protected from mere use, without registration, if they otherwise qualify. In general there will be a preference to frame such a case as one of trademark infringement, rather than fraud, if possible, because fraud is usually harder to prove (trademark infringement dose notr require proof of intention to mislead nor of knowing falsehood), and statutory damages may be available in a trademark infringement case, without any need to prove actual damages. Also, the competing store would generally not be able to bring a fraud case, only the customer who was mislead. could do so
Generally speaking, you must be Licensed, or enter a written agreement, in order to use any logos from any company, especially any time the reference is referenced commercially. There are exceptions to the rule, and some are more lenient than others, but you should always check before showing any company's trademarks or brand icons. For example, Intel® allows third parties to refer to them by name, but displaying a logo requires a license or written permission, per their Trademarks and Brands guideline. You'll find that most companies are probably willing to overlook violations of Licensing as long as the product is placed in a favorable light, since's that's basically free advertising, but you'll want to take the extra few moments and simply call them and ask. A ten minute call could save you tons in legal fees and/or fines. From what I've seen, most companies will allow use of their company name for most commercial and non-commercial uses, but reserve some logos only for licensed partners, and others still only for themselves. They will also generally specify appearance guidelines, such as rendering ® and ™ only the first time on each page of printed material, as well as a specific guideline for sentences and phrases that the name may or may not appear in. They also usually specify that such phrases may not imply that the company is a partner or representative of the company, etc. You can see Intel's Trademark Symbols and Acknowledgements page for an example of what you'd expect to be required to do. This page also gives some example sentences of acceptable and unacceptable phrases. For example: Correct Usage Look for PCs with Intel® Core™ processors. Incorrect Usage Look for PCs with Intel® Core. Mostly, they're concerned about making sure ™ is used correctly, as well as specifying that they make processors, not entire systems. You'll want to try and stay on the good side of their legal department, and represent fairly.