Surnames, Trademarks, and Rock-and-Roll

Using your surname as a trademark may not always be the best strategy. This is especially the case when you are the ex-wife of rock star legend, Alex Van Halen. On October 10, 2013, ELVH, Inc., the intellectual property holding company for the rock band, Van Halen, has sued Kelly Van Halen for trademark infringement because she is using the mark “KellyVanHalen” in connection with items such as chairs, children's blankets, bathing suits as well as building construction and interior design services. The lawsuit alleges that the mark, “KellyVanHalen” is “confusingly similar to Plaintiff's VAN HALEN Marks in sound, appearance and commercial impression”.

The question raised is whether a person has the right to use his or her surname in the conduct of business. The case law is clear that a person cannot use their surname if is likely to cause confusion with a prior used mark. In Miller Brewing Company v. Premier Beverages, Inc. 1981 TTAB LEXIS 51, 10-12 (Trademark Trial & App. Bd. Mar. 3, 1981), the Board provides the following summary regarding this issue:

A person obviously has a right to use one's own name in his or her daily life's experiences and encounters. Nonetheless, this right is not absolute. That is, although one may legally use his own name, the use thereof in connection with a business may be circumscribed if it encroaches upon the good-will acquired by another through prior use of the same or a similar mark and is likely to confuse or mislead the public as to the ownership of the business or of goods emanating therefrom. It has thus been held that:
 
". . . . where a person chooses to use his own name as a trademark, the name immediately becomes a separate and distinct element, devoid of any connection with its owner's personality, and registration thereof is therefore subject to the same rules and principles of law which apply to all nonsurname types of marks". [In re National Cycle Service Inc., 194 USPQ 97 (TTAB, 1976)].

The policy reasons for this position can be found in Ford Motor Company v. Ford, 174 USPQ 456 (CCPA, 1976), wherein the court stated that:

". . . . the interest in allowing an entrepreneur to use his own surname as a trademark on his goods must give way to the more compelling public and private interests involved in avoiding a likelihood of confusion or mistake as to source where use of the surname leads to such confusion or mistake".

Though the lawsuit between Van Halen and Kelly Van Halen may bring forth a lot of media attention, this case is pretty cut-and-dry; in regards to the trademark infringement cause of action, the case will be determined as to whether there it is a likelihood of confusion. In other words, in the mind of a consumer, is it likely that the source of products containing the  “KellyVanHalen” mark would be confused with those originating from the manufacturer of products under the Val Halen mark.

Everything is Bigger in Texas

A trademark battle royale has hit Austin, Texas and it doesn’t look like this legal fight will end anytime soon. Umami Burger, a West Coast hamburger chain with 15 locations nationwide with plans to open more 13 more restaurants this year have filed a lawsuit for trademark infringement against Umami Mia Pizzeria, a newly opened Italian restaurant and pizzeria in Austin, Texas. The burger joint is alleging that the mark, Umami Mia Pizzeria, used by the Austin, TX restaurant is likely to cause confusion with their “Umami Burger” mark, which is registered with the U.S. Patent & Trademark Office (USPTO). Additionally, Umami Burger requested the court to issue a preliminary injunction to prevent the Austin, TX restaurant from using the word “umami” and change their name immediately. 

On August 13, 2013, Judge Sam Sparks denied the injunction and allowed Umami Mia Pizzeria to continue using its mark while the case is being adjudicated. In support of his ruling, Judge sparks stated that not only is “umami” a common word that cannot be monopolized, the restaurants are located in different states and serve different types of cuisine.  

This is not the first time Umami Burger has ran into an issue regarding the descriptiveness and commonality of its mark. During the federal trademark registration process, the owner of Umami Burger was issued an office action because the examiner believed the mark was merely descriptive of the features, ingredients and purpose of applicant’s services. The examiner stated:

The word UMAMI is defined as: “a taste that is characteristic of monosodium glutamate and is associated with meats and other high-protein foods. It is sometimes considered to be a fifth basic taste along with sweet, sour, salty, and bitter.”  The word BURGER is defined as: “a sandwich consisting of a bun, a cooked beef patty, and often other ingredients such as cheese, onion slices, lettuce, or condiments.”  See attached dictionary definitions.  Applicant’s restaurant is a BURGER restaurant.  The primary food item found on the menu (see specimen of use) is BURGERS.  The word UMAMI describes a flavor of food.  In this case, it specifically describes a flavor found in applicant’s BURGERS.  As such, the proposed mark merely describes the identified goods and, thus, registration on the Principal Register is refused.

The mark did eventually register after Umami Burger’s trademark attorney argued that the applied-for mark was not descriptive, but rather suggestive. A suggestive mark is one that requires imagination, thought, and perception to reach a conclusion as to the nature of the goods or services in connection with which it is used. Suggestive marks are allowed to be registered with the USPTO.

Even though the mark is federally registered, it is still a weak mark and may have some trouble holding up in court. Even though preliminary injunction was denied, this Texas-sized lawsuit is far from over.