By Zachary Wadlé

Satoru "Miles" Kobayashi opened a new jazz club and restaurant in Manhattan in April 2010. Kobayashi named his establishment the “Miles Café” and used the “Silhouette Profile” of jazz icon Miles Davis as part of his logo. The heirs of Miles Davis felt “Kind of Blue” about this development and sued Kobayashi in federal court claiming trademark dilution, false advertising, and various violations of the Lanham Act. Davis’ heirs say Kobayashi changed his first name to Miles, claimed the real Miles Davis appeared to him in a dream and suddenly inspired him to open a restaurant bearing his name. They allege “[Kobayashi is] intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles’ Cafe in a way that is likely to mislead the public.” Davis’ heirs seek injunctive relief and the destruction of all of the "confusingly similar" Miles Café advertising and merchandise.


Davis’ heirs’ complaint relies on trademarks they own for the name “Miles Davis.” But you may ask how can Miles Davis’ heirs have exclusive rights over the “Miles Davis” name? Surely there are other people named Miles Davis that have just as much right to use their name as the jazz legend.  This is the reason why trademarking a personal name is difficult under trademark law. In particular, you have to demonstrate “secondary meaning” to qualify for trademark protection. Miles Davis won eight Grammys. His 1959 album "Kind of Blue" has sold more than 4 million copies. He was inducted into the Rock & Roll Hall of Fame in 2006 and was declared a national treasure’ by the U.S. House of Representatives in 2009. These kind of laurels helped prove the requisite “secondary meaning” of Miles Davis’ name, and allowed his heirs to assert trademark rights against Mr. Kobayashi.


How does the average person demonstrate “secondary meaning” of their own name? It’s not easy. In general, for a personal name trademark application to be granted protected trademark status, the proposed mark has to identify the services associated with the name, distinguish those services from others, and it has to be a source indicator of those services. In the case of a personal name, this means the name itself has to tell the consuming public who you are and what you sell entirely on its own. Stated another way, the person’s name has to be so distinctive that the consuming public automatically thinks of that particular person and his/her services when hearing that name, not just a person with that name. An applicant shows this by providing evidence of “secondary meaning” of the proposed mark.   Secondary meaning means that even though the word is descriptive (like a name is generally descriptive of a person), the public doesn’t think of the name as a merely a descriptor. Instead, the public think of a certain person in particular and the services that person provides. This can be hard to prove, unless you and your business are very famous. 

To demonstrate that personal names (actual names and nicknames) can function as marks only if they identify and distinguish the services and not just the person, the Trademark Manual of Examination Procedure cites a few holdings where trademark protection was denied. They include: In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Products, Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group). In each case, the proposed trademark was not entitled to registration, because the public did not associate a particular service with the name. Instead, the proposed trademark merely brought to mind the identity of the person with the name.

Trademarking a name is commonplace for celebrities and athletes because the primary hurdle to registration is easier to meet – people already know who they are.   All that’s left for the celebrity or athlete is to pick a service and start developing public recognition of the service they provide. Think Michael Jordan for basketball shoe endorsements. But if your name is Joe Jones from Sacramento, California the process can be much more difficult and can take years to accomplish. For instance, if Joe Jones wanted to trademark JOE JONES for his restaurant, he would have to acquire a high level of distinctiveness and provide evidence that the public readily associates his name with restaurant services. This requires a well-known enterprise that achieves widespread attention and notoriety before trademark protection is ever granted. In the case of personal name trademarks, success of the underlying individual and business is a prerequisite to trademark registration. The trademark is really used to protect the goodwill already built up with the name, instead of preemptively reserving use of the name to the exclusion of competitors.