What’s in a Name? Plenty, if You Are Saquon Barkley

Saquon Barkley, the Philadelphia Eagles running back who signed a three-year $37.8 million contract earlier this year, recently applied with the U.S. Patent and Trademark Office (USPTO) to trademark his name. According to the application filed by Barkley’s SRQB, LLC, “Saquon Barkley” will be used for business marketing, consulting, and talent management services. Previously, SRQB, LLC submitted a trademark application to register Barkley’s name for use on clothing and apparel.

Barkley is the most recent of many high-profile sports, entertainment, and celebrity personalities to use the trademark process to protect their name and, ultimately, their brand. Other notable individuals who have trademarked their names include Taylor Swift, Bruce Springsteen, and LeBron James.

What Is a Trademark?

A trademark is a type of intellectual property consisting of words, phrases, logos, symbols, or designs that are used to identify your goods or services. A trademark helps protect an individual’s brand by differentiating their product or service from those provided by others.

A trademark registered with the USPTO benefits from meaningful legal protections that include:

• The federal trademark registration is valid throughout the United States.
• Federally registered trademarks can be used as a basis for filing for trademark protection in foreign countries.
• Holders of federally registered trademarks can file lawsuits, such as trademark prosecutions, in federal court.
• S. Customs and Border Protection can stop the importation of goods that infringe upon a federally registered trademark.

A federally registered trademark provides the gold standard of protection for your brand’s identifying name, design, or logo.

Why Trademark a Name?

For public figures, athletes, entertainers, and other celebrities, the decision to trademark their name is critically important in controlling their brand, image, and income. A federally registered trademark gives the holder the exclusive right to the name. Additionally, the trademark holder can keep their name off of inferior or questionable products that could hurt their reputation, earn money from the legitimate licensing of their name, and prevent the sale or distribution of fake goods that infringe upon the trademark.

When Can a Name be Trademarked?

Federal law makes it easier to trademark a personal name than a surname. A personal name can include a first name or a first name with a last name. A qualifying personal name can generally be trademarked as long as it does not create confusion with a similar name already in use for related goods or services.

It is more challenging to trademark an individual’s surname or last name. To trademark a surname, five factors are considered to determine if the name is distinctive or merely a surname:

• Is the surname rare? The rarer the surname, the more distinctive it seems;
• Does the surname belong to an individual involved with the application? If the surname belongs to the trademark applicant, it is more likely to be considered merely a surname;
• Does the surname have another recognized meaning? If the name has a meaning outside of a surname, it is more likely to be considered distinctive;
• Does the name look and feel like a surname? A name that seems like a surname does not seem distinctive, and
• Does the stylization of the name create a separate commercial impression greater than that of merely a surname? If so, the surname seems more distinctive.

A personal name is more easily trademarked because there is no need to prove distinctiveness.

Trademark Protection

For Barkley, registering his name as a trademark is only the first step. Now, he will need to protect it.

The USPTO issues trademarks, but it does not enforce them. The trademark holder is responsible for protecting the trademark. To do so, it is critical to monitor new USPTO filings and oppose any trademarks that would confuse your customers.

Additionally, if a business uses a name, logo, or design similar to your registered trademark, you may need to take action to stop them. In many cases, sending a cease-and-desist letter may be enough to stop the infringement. You can also enforce your federal trademark registration by filing a lawsuit against the infringer.

The failure to prosecute an isolated trademark infringement should not lead to the abandonment of the mark. However, the widespread failure to address the infringements on a trademark could limit the holder’s rights.

Lastly, to maintain your trademark over the long term, it is necessary to file specific maintenance documents between the fifth and sixth year after registration and between the ninth and tenth year after registration. Failing to file the required maintenance documents can lead to the cancellation of the trademark and may allow others to take advantage of the brand you’ve built.

To Protect Your Name or Your Brand, Contact Carrie Ward

Carrie Ward has not yet trademarked her own name but with years of experience in intellectual property law, she can manage your trademark applications and enforcement actions. With a background that includes working as an in-house attorney at ABC and the company now known as Audacy, Carrie has a client-based focus that helps her understand legal issues from the client’s perspective.

If you have questions about registering or protecting your trademark, call Carrie at 856-354-7700.