Trademark Protection For Individual Names - A "Poison

Pill" For Cyber squatters

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Should I register my individual name as a federal trademark?

The unequivocal answer for celebrities, sports figures, published authors, speakers and
individuals marketing goods and services under their individual names is, "Yes."
A registration allows clients and counsel to act quickly to prevent unauthorized use of individual
names for marketing of competitive goods and services, a practice which is exploding on the
Internet. Just as major corporations set up a "poison pill" to prevent uninvited take over attempts
by competitors, individuals with trademark rights in individual names can use a trademark
registration to serve the same purpose.
There are two major reasons to register an individual's name as a trademark.
1. Provides access to speedy and less costly remedies afforded to trademark owners whose marks
are contained in unauthorized domain names; and
2. Creates a poison pill against competitors purchasing marks as search terms and who use marks
in Metadata.
The "right of publicity" is a legal doctrine used to prevent unauthorized use of a person's name,
image, or likeness for commercial purposes. Access to remedies for such violations is still
limited to traditional, more expensive court proceedings. Moreover, the U.S. anti cyber squatting
statute, 15 U.S.C.A. § 1129, provides for relief for theft of unregistered individual names only
upon proof the registration was made with an intent to sell the name for a profit, and does not
protect against competitive uses, which are much more common.
California Business & Professions Code § 17525 is another alternative that affords protection for
names of deceased celebrities. It eliminates the requirement that registration be made with an
intent to extort money. That is well and good, but how do California residents sue a cyber
squatter based in Korea, over which there is no jurisdiction, i.e. the court has no authority to bind
the party to its decision?
How Does a Federal Trademark Benefit the Individual?
A review of the most common forms of brandjacking provides the answer.
Unauthorized Use of an Individual's Name in a Domain Name. What happens when an
individual's name ends up in the URL of a domain owned and used by a third party? There are
two possible remedies.
Uniform Domain Dispute Resolution ("UDRP"). The arbitration may be filed before the
World Intellectual Property Organization (WIPO) or one of several other approved ICANN
dispute forums. A decision is made within two months of appointment of the arbitrator. Costs are
substantially less than a court proceeding since all proceedings are in writing.
One must prove three elements to secure return of the domain:
• The disputed domain name is identical or confusingly similar to a trademark or service mark in
which the Complainant has right; and
• The registrant has no legitimate rights in the mark; and
• Registration was made in bad faith.
The first element is established by providing a valid trademark registration. A federal registration
proves the first element without need for further evidence of trademark use.
Contrast the result where there is no registration and the individual, albeit well known, loses.
David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514. David Pecker, CEO of American
Media, was unsuccessful in proving that he had "used his personal name for the purpose of
advertising or promoting his business or for the sale of any goods or services." Joacim Bruus-
Jensen v. John Adamsen, WIPO Case No. D2004-0458.