It is a common misconception among fashion industry folks that individuals are legally entitled to create brands under their own names and obtain legal protection for such names. It is a similarly common misapprehension that launching an eponymous label is often a good idea and/or a smart business endeavor. Yet, when put into practice, the eponymous label often leads to legal issues. So, what are some of the most common barriers to using your own name in connection with a commercial brand and what - exactly - are the downfalls of such a move?
Individuals are often barred from using their birth names in connection with a business venture because their names are already in use. If someone else has already used your name (or a “confusingly” similar name) in the same market – or on similar classes of goods and/or services, to be exact – as you, there is a chance that you will be prevented from using your own name in connection therewith. While this often proves a frustrating principle for creatives (if it does not lean in their favor), it is good law in the U.S., nonetheless, where trademark law governs such matters.
As we learned not too long ago in the Chanel v. Chanel’s Salon case - in which the Paris-based design house was successful in forcing Indiana-based Chanel Jones to cease use of the word “Chanel” in connection with her small business - an individual does not have an unfettered right to use his/her personal name for commercial purposes. There have been a number of other cases on this issue in recent the years involving well-known trademarks, no shortage of which were fashion related.
The most recent is the ongoing battle waged against New York-based menswear brand Thaddeus O'Neil by the older, bigger and somewhat similarly named O’Neill surf brand. The two brands have been going back and forth before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board ever since O'Neill opposed Thaddeus O'Neil's trademark application early this year.
Southern California-based O'Neill argued that Thaddeus O'Neil's pending trademark application for THADDEUS O’NEIL "is likely to cause confusion with [O'Neil's own] registered marks." The surf brand has also alleged that it "believes it will be damaged by registration of the [THADDEUS O’NEIL] mark," especially given the surf-inspired nature of O'Neil's own brand. And it has vowed to fight for its trademark rights, a battle that could prove not only lengthy but also particularly costly.
Another one of the key considerations in terms of launching an eponymous label involves the long-term repercussions of a designer using his/her own name, particularly if there is even a remote possibility of selling the brand at some point down the line. You may be prevented from using your own name in relation to your future business ventures if they are in the same - or a similar - field as a company you previously branded with your own name.
One of the most famous cases in this area involved designer Joseph Abboud. In 1987, Abboud launched his label and thirteen years later, in 2000, sold all of his rights in and to the brand to JA Apparel for $65.5 million.
Specifically, JA Apparel acquired the right to the “names, trademarks, trade names, services marks, logos, insignias and designations” associated with the brand. As part of the deal, Abboud also let go of “all rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words ‘Joseph Abboud,’ ‘designed by Joseph Abboud,’ ‘by Joseph Abboud,’ ‘JOE’ or ‘JA,’ or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols."
Abboud was subsequently shut down less than a decade later, when a court prevented from using his name in connection with a separate clothing line, citing the language of his deal with JA Apparel. The court was not swayed by the fact that Abboud simply wanted to make commercial use of his own name.
Kate Spade has something of a similar tale, albeit without the messy legal battle. Following the sale of her eponymous label to Liz Claiborne, Spade, herself, was forced to rebrand if she wanted to create a new label – and she did just that. In November 2015, she announced that with the help of her husband Andy Spade and Elyce Arons – the three of whom cofounded Kate Spade together in 1993 – she would launch a new footwear and handbag label, Frances Valentine.
Spade took it a step further though and legally changed her personal name to Frances Valentine, as well, in order to completely distinguish herself from the Kate Spade brand - and ideally, avoid any potentiallegal fallout later on down the road.
These cautionary tales are just a few of the pitfalls that could arise when you opt to use your personal name in business.