Does Using your Name in your Brand Create Legitimate Use?

ObtainADomain · Feb 28, 2003

I was curious if you have any more protection if your brand uses part of your name. Let's say you your name is Joe Blow and you register BlowTrumpets.com with hopes of marketing your own brand of trumpets.

But little did you know, there is already a Trumpet manufacturer who has a "Blow Trumpets" brand (but may or may not have a trademark) and decides he's going to take you to UDRP to try to win your domain.

Does the fact that you used part of your name in your brand give you any more legitimate use of this brand name?

Another example is, what if there is 3 John Smiths who within a few months of each other, all decided to create the investment brand: "Smith Funds," but none of whom have yet trademarked or Servicemarked their brand. One of the Johns is lucky enough to register, SmithFunds.com, but the others, who started marketing their funds a month earlier, take him to UDRP. Any guesses what may happen at UDRP?

Thanks

jberryhill · Feb 28, 2003

"Does the fact that you used part of your name in your brand give you any more legitimate use of this brand name? "

I'm going to treat this as two questions, since the first answer is the one that really matters.

1. Under US trademark law, you do not have an unqualified right to use your personal name as a trademark. If your name is McDonald, you can certainly run a restaurant, but you cannot hang a sign outside calling it "McDonald's Restaurant". Yes, it is a true statement of fact, but it is misleading under the trademark laws. This is not a first amendment issue, because hanging that sign on the front of your restaurant is commercial speech, which is subject to regulation.

One of the best examples of this kind of thing in action is the saga between Taylor wines and Bully Hill Vineyard. The owner of Bully Hill is a lineal descendant of the founder of Taylor wines. However, his family had sold the goodwill and the mark to another wine company. Virtually every time the company obtained an injunction against his use of the name "Taylor" on a wine label, he would find a way around it. At one point in time, his wine labels had amusing puzzles on it, inviting the reader to solve the mystery of the ownership of Bully Hill Vineyards.

In the domain name context, this principle was applied in a case between Ford Motor Co. and a man named Ford who ran an accounting service and used fordfinancialservices.com. The problem is that Ford Motor Co. had prior rights in "Ford" for financial services, and the court ordered transfer of the domain name.

2. Technically, in the UDRP context, use of the domain name for any legitimate business should be considered legitimate use. Whether there is an infringement issue should be relegated to the bad faith determination. However, most panelists adopt the position that an infringing use is not a legitimate use. That is an undue expansion of the UDRP, since the policy was not really designed to resolve substantive issues of trademark infringement. But, that's the way it has tended to pan out in most cases.