Authors: , Matthew D. Asbell | Practices: , , , , | Tags: , , , , , , , , ,


bigstock-Clothes-Labels-Closeup-Designer Formerly Known As 9_4_2016-121675226-smKate Spade, Paul Frank, Joseph Abboud, Catherine Malandrino, and Karen Millen—aside from being well-known designers, all have something else in common; they no longer own the right to use their personal names as their brands. In the fashion industry, it is common for designers to use their personal names to refer to their clothing designs and related products. However, this practice comes with its own concerns that designers, as well as companies purchasing the brands of those designers, should consider when starting or acquiring an eponymous brand.

While developing their personal names as fashion brands, designers should be aware that there are a number of risks that they could encounter at the outset. Initially, they may encounter hurdles when clearing and attempting to register their personal names as trademarks in the United States and world-wide. Eventually, if they ever sell their companies, they could lose the right to use their personal names in future fashion ventures. While courts typically refrain from denying a person the right to use his or her own name, if a designer ever sells an eponymous brand, he or she could later be barred from using his or her personal name on or as a trademark for similar products. Often this predicament is discovered post hoc, after a purchase agreement has been made, and results in onerous and expensive disputes that do not benefit either party. In dealing with an international fashion brand, disputes can even arise on multiple fronts around the world.

With this in mind, designers may still prefer to develop their personal names as their brands. Ultimately, for an emerging designer, achieving fame and wide-spread name recognition may outweigh any potential risks, and the sale of their companies often comes with a large price-tag, as acquiring entities are willing to pay sizable monetary sums for successful fashion brands. In any event, the designer and purchasing company both should perform due diligence when developing or contracting for the sale of an eponymous brand. It is imperative for both parties to consider the various ways designers may use or be required to use their names in connection with future ventures, such as in press releases, third-party websites, keyword advertising, social media posts, domain names, and other related intellectual property documents, including, for example, design patent applications. Designers should also strategically manage their intellectual property portfolios in the event that they ultimately sell their assets. After selling their brands, designers may eventually need to rebrand themselves by taking on a new name and becoming “the designer formerly known as…”

Clearing and Registering Personal Names as Trademarks

For designers, it may be difficult to clear and register a personal name as a trademark. First, the marketplace and applicable trademark register may be crowded with marks that include the designer’s given name. Such marks may pose obstacles to registration and use even though the designer may plan to use the given name only in combination with other elements such as their surname. Also, in the United States, a mark can be refused for its surname significance. Under the Lanham Act, 15 U.S.C. 1052(e), a mark that is “primarily merely a surname” is not federally registrable on the Principal Register without proof of secondary meaning, which essentially requires a showing that in the minds of relevant consumers the surname indicates the source of the goods or services. Additionally, depending on the markets in which they do or will sell their products, designers must consider early on the possibility of clearing and registering versions of their names in non-Latin characters in those jurisdictions.

Whether a trademark is “primarily merely a surname” depends on a number of different factors, such as (1) whether the term is a rare surname; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning apart from being a surname; (4) whether the term has the “look and feel” of a surname; and (5) whether the mark has a unique text stylization that creates a distinct commercial impression. This is a highly subjective test that looks at the probable reaction of consumers in the marketplace. Before preparing an application for a surname by itself or even combined with some minimal additional elements such as a first initial, it is important to strategize ways to build and demonstrate secondary meaning to increase the likelihood of the mark being registered. Fortunately, designers who adopt the combination of their given name and their surname are unlikely to face such a refusal, which only applies when the mark consists of little more than a surname.

If the designer’s surname is already well-known and an extensive amount of resources have been allocated to promote the mark, the designer may consider making a claim of acquired distinctiveness to show that the mark has established a secondary meaning. Otherwise, the designer may register the surname mark on the Supplemental Register and use it in commerce for at least five continuous years, in order to eventually acquire distinctiveness. See Inherent and Acquired Distinctiveness and the Principal and Supplemental Registers for U.S. Trademarks (for more information on the Supplemental Register). In other countries, there may be similar rules with regard to the distinctiveness of personal names as trademarks.

When considering possible rights outside of the United States, designers who wish to own and use their names as trademarks should also contemplate whether they will use or need to prevent others from using a phonetically equivalent version of their name in the local language. Former basketball star, Michael Jordan, learned this the hard way when he spent nearly five years fighting in the Chinese courts to finally get the rights to a Chinese character version of his surname, 乔丹, from Qiaodan Sports Co., Ltd., which registered the mark and operated nearly 3,000 retail locations in China under it. As Mr. Jordan’s success in court was largely a result of his fame, designers who are any less well-known are wise to consider applying to register their names in non-Latin characters in relevant jurisdictions as early as possible rather than to later discover that another party has adopted and registered the name before them.

Global Disputes over Personal Names

When managing a global brand, disputes may arise contemporaneously in different locations around the world. This is happening in a legal battle involving London-based international fashion brand Karen Millen Fashions Limited (“KML”) and designer Karen Millen over the right to use her name.

By way of background, Karen Millen sold her company in 2004 to KML’s predecessor-in-interest, the Icelandic group Baugur, along with the rights to use her name on future competing ventures, by way of a purchase agreement. Years later, Ms. Millen proceeded to challenge the agreement and attempted to register a number of trademarks in the United States that included her name. This conflict escalated, and Ms. Millen filed cancellation actions in the United States against several KML marks that included her name. Those proceedings were subsequently suspended in view of court litigation. KML initiated a litigation in the U.S. District Court for the Eastern District of Virginia, claiming, inter alia, breach of contract, which was dismissed by the court, appealed, and subsequently voluntarily dismissed on October 11, 2016. Relying on a forum selection clause in the purchase agreement that allegedly required contractual disputes be litigated in the United Kingdom, Ms. Millen had brought an action in the High Court of England and Wales, which included a claim for declaratory judgment enabling her to use the marks KAREN and KAREN MILLEN in the United States. Ms. Millen had previously reached a settlement with regard to using her name in the United Kingdom and European Union in February 2015, which generally limited her from using her name on products in these jurisdictions.

In the High Court decision in England and Wales, Millen v Karen Millen Fashions Ltd. & Anor EWHC 2104 (Ch) (2016), Judge Meade ruled that the designer Karen Millen no longer had the right in the United States to use her name KAREN MILLEN as a trademark for homewares and lifestyle ventures or KAREN for any goods and services. The court noted that it would have been inclined to allow the mark KAREN to be used had the designer claimed limited rights with respect to the geographic scope and description of goods and services that did not conflict with the rights of KML. Ms. Millen was further obliged to provide consent to additional registrations by KML that include her name.

Since the High Court decision, Ms. Millen has expressly abandoned a majority of the United States trademark applications and registrations for marks that include her full name. 1  At the same time, a pending application filed by Ms. Millen for HOME BY KAREN (Reg. No. 86246065) has proceeded to publication and was opposed by KML. Without successfully appealing the High Court’s decision, Ms. Millen will most likely need to redevelop her new brand under a different name.

Possible Loopholes to Losing One’s Own Name and Likeness

After selling their brands, many designers may not realize that they can no longer use their names in connection with their new fashion ventures. In many cases, they can still draw a connection by identifying themselves as the designer of the new brand, without using their name to identify the brand itself. The distinction often made in these scenarios is between the trademark, which identifies the source of goods or services, and the designer’s right of publicity in his or her name and likeness independent of the products he or she designs. In some jurisdictions, designers may also preserve an unassignable right of attribution to his or her original works protectable under Copyright law as part of the designers’ so-called moral rights.

In most U.S. states, a person’s right to commercially use his or her name and likeness falls under the category of the right of publicity, which has been derived from the right of privacy. The nature of the right, as well as the term used to describe it, and the assignability of the right may be different from one state, country, or location in the world to the next. Some jurisdictions, like France and other European countries, may also recognize under their respective Copyright laws a fashion designer’s moral rights over his or her design at the moment the original work is created. Moral rights normally include the right of attribution (i.e., the right to be identified as the author); the right of integrity (i.e., the right to prohibit modification or destruction of the work); the right of disclosure (i.e., the right of control over publicizing of the work); and the right of withdrawal (i.e., the right to take back the work from the public after it has been released). See Witzburg, Francesca M. Protecting Fashion: A Comparative Analysis of Fashion Design Protection in the U.S. and Europe, Cardozo Arts & Entertainment Law Journal (Sept. 19, 2014). In jurisdictions that recognize moral rights, the law typically dictates that the designer cannot assign the right of attribution. Therefore, after selling their eponymous brands, designers may maintain moral rights over using their names to attribute themselves as the creator of their past and future designs.

“The consumer has a right to know the creator of a work,” stated menswear designer Joseph Abboud. After selling his trademarks to JA Apparel Corp. (“JA Apparel”) for $65.5 million in 2000, Mr. Abboud sought to create a new line called “Jaz” and use the tagline, “a new composition by designer Joseph Abboud.” When he tried to use his personal name in connection with the brand, JA Apparel sued him.
The U.S. District Court for the Southern District of New York ruled that “Abboud did not sell, and JA Apparel did not purchase, the exclusive right to use the ‘Joseph Abboud’ name commercially. Rather, Abboud sold, and JA Apparel purchased, the ‘Joseph Abboud’ name as a trademark.” JA Apparel Corp. v. Abboud, 682 F. Supp. 2d 294 (2010). The court went on to grant the designer certain qualified rights, like the ability to use his name, “in the context of a complete sentence or descriptive phrase,” as long as it be “no larger or more distinct than the surrounding words in that sentence or phrase,” which could constitute a fair use under Section 33(b)(4) of the Lanham Act, 15 U.S.C. § 1115(b)(4). However, he would have to display the term “Jaz” largely in advertisements to make the source clear and include a disclaimer of any affiliation with JA Apparel and its related products. The designer ultimately could no longer use his name in any manner on any “Jaz” labels, packaging, or hang-tags.

In a similar case, the U.S. District Court for the Southern District of New York ruled that Paulo Gucci, former chief designer of Gucci, was unable to use the name “Gucci” as a trademark. Gucci v. Gucci Shops, Inc., 688 F.Supp. 916 (1988). However, he could continue to use his personal name to identify himself as the designer of products sold under a different brand name, as long as his name “always appear[ed] after the trademark in advertisements and on labels,” and that it was less prominent than the trademark. He was further required to disclaim any affiliation with the Gucci entities in connection with his use of his name on his designs.

The designer Paul Frank Sunich also found himself in a legal battle with the owners of his former company Paul Frank Industries, Inc., over his use of his full name on T-shirts. Paul Frank Industries, Inc. v. Paul Sunich, 502 F.Supp.2d 1094 (2007). The U.S. District Court for the Central District of California ruled that Mr. Sunich could not use his name on T-shirts, which the public had come to associate with his former company, and that he could use his name to identify himself as designer of his newly developed products, (e.g., on business cards or on his website), as long as he disclaimed his affiliation from his former company on those products.

While these designers were able to use their own name in some way in relation to their new brands, some designers find themselves not as free to do so. After a legal battle and separation with her business partners, Catherine Malandrino lost the ability to use her name as her brand to CM Brand Holdings LLC. The owners of Ms. Malandrino’s trademarks apparently claimed in court documents that they could control the designer’s “likeness, being and persona.” The Wall Street Journal article, When Is Kate Spade Not Kate Spade? When She’s Frances Valentine, published on August 23, 2016, reported Ms. Malandrino’s attorney’s statement in response, “that would make her an indentured servant.”

When Ms. Malandrino launched her new collection for the Home Shopping Network (“HSN”) at a much lower price-point, HSN sent promotional e-mails labeling the brand as French Rendez Vous by Catherine Malandrino. Since then, HSN reportedly stopped using the designer’s name in connection with the line, possibly in response to a demand letter, and there is no mention of the designer’s name on the HSN webpage for the product line.

Whether knowingly or not, HSN is able to draw the connection between the new brand and the designer without directly using her name. There are a number of articles by major fashion publications, including Vogue, InStyle, and WWD, that connect the designer with the new HSN fashion line. While the designer may have lost the ability to use her name and likeness on new ventures, she appears to still be able to influence the media to use her name and draw the connection for her. Whether or not it is a part of a designer’s strategy, the media may still report a connection between brand and designer.

Web search engine queries for Ms. Malandrino’s name also include references to the designer’s new collection on the HSN website (even though the website itself does not refer to the designer’s name). In an expanding information age that is becoming increasingly digitized, there are a variety of Search Engine Optimization (“SEO”) strategies that designers may use to disseminate the news and draw the link between their new brands and their personal names. For example, by relying on keyword advertising, designers may find creative ways to rebrand their new ventures without ever having to “use” their names as trademarks.  U.S. courts have held that the purchase of a trademarked term as a keyword that affects the sponsored results in online searches constitutes “use” as a trademark; however, it may not be sufficient to cause consumer confusion necessary for infringement liability. 2

Additionally, designers must use their personal names in connection with certain legal documents, including for example, any design patents they pursue for their new companies. When filing a design patent in the United States, applicants must designate the legal name of the actual inventor(s), which will often be the individual designer(s) and cannot be a juristic entity, though the patent may be assigned to one. For example, the “individual” designer Kate Spade signed the U.S. design patent application for an ornamental design of a bag clasp, U.S. Patent No. D533, 719, depicted below, listing herself as the inventor and the company Kate Spade LLC as the assignee. After selling the right to use his or her name, a designer may not be precluded from listing his or her name as the inventor in a design patent application or in other documents requiring his or her legal name. As designers seek to redefine themselves and their work, this practice may provide a nexus between the designers’ new brands and their personal names, even where designers are otherwise precluded from using their names in other ways.

Other often overlooked assets associated with intellectual property rights that must be considered in relation to the sale of an eponymous brand are domain names and social media accounts that incorporate the designer’s name. Upon the sale of their rights, designers may need to transfer domains comprising their names. A subsequent effort by the designer to register and use a version of her name that she has clearly sold may be considered “bad faith” that would support the assignee’s Uniform Domain Name Dispute Resolution Proceeding (“UDRP”) or Uniform Rapid Suspension (“URS”) proceedings to transfer, suspend, or cancel the domain. With regard to the designer’s social media accounts, the purchasing company should contemplate acquiring any login information or administrative privileges at the time of closing, as it could later be in violation of a social media website’s privacy policy for the website to release such information or facilitate a transfer of ownership. Before reaching an agreement, the designer and purchasing company should come to a mutual understanding of which, if any, domain names and social media accounts will be transferred and which of these intellectual properties may be retained and used, as well as whether the designer will be able to include his or her name in future domain names and social media accounts. It may be advisable for the designer to immediately reserve a mutually acceptable domain name and/or social media account before closing a deal.

When words are limited and designers can no longer use their name or likeness, they may consider alternative ways that comply with the terms of their purchase agreements to identify themselves as designers of their new brands, e.g., press releases, third-party websites, keyword advertising, social media posts, domain names and even intellectual property applications.

Name Changers Can Be Game Changers for Designers

The Wall Street Journal article, cited above, also reported that the designer formally known as Kate Spade was actually first named Katherine Noel Brosnahan. When she married her husband and business partner Andy Spade, she adopted the name Kate Spade, allegedly without ever legally changing her name (though her design patent, referenced above, suggests otherwise). Since then, the name Kate Spade has not only become synonymous with high-end handbags and shoes, but it has also become the well-known identifier of the designer herself.

In 2006, Ms. Brosnahan sold her company to Liz Claiborne Inc., which eventually rebranded it as Kate Spade & Co., along with the right to use the name as her brand. Since then, she took on the name Katherine Noel Frances Valentine Brosnahan and now designs under the label Frances Valentine.

There are several U.S. federal registrations and pending applications for the mark FRANCES VALENTINE, in the name of Quince New York Shoes, LLC, covering, inter alia, sunglasses, handbags, clothing, and shoes. Before one of the registrations issued, Reg. No. 4965459, the Examining Attorney inquired whether the mark identifies a living person. Under the Lanham Act, 15 U.S.C. §1052(c), if the mark identifies a living person, the Applicant is required to provide a written consent. See TMEP § 813.01(a). Interestingly, the Applicant for the mark FRANCES VALENTINE responded that the name portrayed in the mark, “does not identify a particular living individual.” This appears to be contrary to media reports that the mark is connected with the designer’s new personal name. As a result of this statement, whether accurate or not, Ms. Brosnahan was not required to provide her written consent, and the mark proceeded to registration.

While a personal connection was not made in the U.S. trademark prosecution history for the new brand, retail partners of Frances Valentine were able to connect the brand with the designer by using clever language in promotional materials. In April 2016, Nordstrom Inc. hosted a reception for the designer in Boca Raton, Florida, and the invitations reportedly described her as the “former designer and founder of [the] Kate Spade brand.” Carefully drafted language like this was likely vetted by an attorney in order to introduce Ms. Brosnahan’s new brand in connection with her former brand without infringing on the trademark rights of Kate Spade & Co.

According to the Wall Street Journal article, the CEO of Kate Spade & Co., Craig Leavitt, stated that his only concern is that the brand would not be “confusing to our customers or infringing on our trademarks.” Ms. Brosnahan’s name change is somewhat of a game changer for designers who have sold their eponymous brands, because it shows how designers can start new ventures under different personal names, while helping consumers recognize a connection between the designer’s former and new name.

A Final Consideration When Using or Acquiring a Personal Name as a Brand

Before designers use their personal names as their brands, they should consider whether they can accept the possibility of eventually forfeiting the right to use their names on future ventures, in exchange for reputational and financial gains that may be achieved if they ultimately decide to sell the brand. Once a personal name has been successfully cleared and registered, there may be a time when the designer wants to sell the company and rights to the company’s trademarks and related rights. If this happens, it is important to have a purchasing agreement carefully drafted with preferably exhaustive consideration of the various types of name uses. When designers sell the rights to their personal names, they may consider alternative ways to connect themselves with their new brands and whether to take on a different name, as “the designer formerly known as…”

  1. See, e.g., KAREN BY KAREN MILLEN (Reg. No. 86246014); KAREN MILLEN (Reg. No. 86246046); and HOME BY KAREN MILLEN (Reg. No. 86246059).
  2. See, e.g., 1-800 Contacts, Inc. v., Inc., 722 F.3d 1229, 1242 (10th Cir. 2013); Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011); Rescuecom Corp. v. Google Inc., 562 F.3d 123, 127 (2d Cir. 2009).
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