When used in connection with a product or service, any name, symbol, logo, or combination of these items may be protected as a trademark. The purpose of a trademark is to identify the source of a product or service.
Trademark laws are designed to protect consumers rather than trademark owners, so the test for infringement is whether the marks at issue are likely to confuse consumers.
But what if the mark you want to use is your own name? A recent case involving Charles Walgreen’s use of his name in connection with his business, Walgreen Health Solutions, LLC (WHS), is a good reminder that using your own name as a trademark might result in you being held liable for infringement.
Walgreen Co., which operates around 8,600 retail drug stores throughout the United States as well as an online store, sued WHS for, among other things, trademark infringement and unfair competition.
WHS operates online storefronts selling durable medical equipment, general healthcare advice and information, and other health products. Mr. Walgreen is the President, CEO, and partial owner of WHS, though he was previously employed by Walgreen Co. and is the son of a former Walgreen Co. CEO.
WHS and Mr. Walgreen asked the court to dismiss the Complaint against them for failure to state a claim. This means the court was deciding only whether Walgreen Co. sufficiently alleged its claims so that the case can continue.
One of the arguments made by the defendants is that even though Walgreen Co. uses and has registered the WALGREENS trademark for use in connection with a variety of health products, Mr. Walgreen has the right to use his surname in conjunction with his business.
Historically, courts upheld individuals’ rights to use their names in business, even when that use conflicted with existing trademarks. Over time, though, courts have recognized the need to protect consumers from confusion, so the right of an individual to use their surname in business is no longer absolute.
Further, a mark that is “primarily merely a surname” isn’t registrable unless it has acquired “secondary meaning” in the minds of the relevant public. In other words, consumers must associate the mark with a unique source and think of the surname as a brand rather than as a person’s name.
In this case, the court found that Walgreen Co. had sufficiently alleged that the WALGREENS mark has achieved secondary meaning and is protectible as a trademark.
The court then went on to evaluate the issue of trademark infringement and, noting that the marks themselves are similar and both companies sell health products online, determined that Walgreens had pled facts that could plausibly result in finding a likelihood of confusion.
In addition, said the court, Walgreen Co. has used the WALGREENS mark for more than a century and operates more than 8,000 stores using that mark, meaning that Walgreen Co. alleged facts sufficient to support the reasonable inference that the WALGREENS mark is “strong and distinctive.”
In this situation, Mr. Walgreen knew that Walgreen Co. used its WALGREENS mark in connection with health products, but the same rules would apply if Mr. Walgreen hadn’t been closely affiliated with Walgreen Co. and if WALGREENS weren’t such a famous mark.
To help avoid this problem, if you’re choosing a new trademark – even if the mark is your own name – you should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you plan to use your mark online.
Please feel free to contact us if you have any questions about, or need assistance with, conducting a trademark search or protecting your trademarks.
Photo Credit: Mike Mozart. This work is licensed under the Creative Commons Attribution 2.0 Generic CC by 2.0 Deed: https://creativecommons.org/licenses/by/2.0/
