Your Name, Your Brand? The Surprising Truth About Using Your Name in Business

It seems like the most natural thing in the world. You’re starting a business, and you think, “I’ll just name it after myself.” After all, what could be more authentically you than your own name?

But before you order those business cards for “Smith Consulting” or “Johnson’s Bakery,” let’s talk about a frequently overlooked legal reality: your right to use your own name in business isn’t as absolute as you might think.

Just ask Joseph Gallo, brother of the famous Gallo winery founders Ernest and Julio. When Joseph decided to start a cheese business using his own surname, he found himself on the receiving end of a trademark infringement lawsuit from his brothers’ wine empire. Despite sharing the same last name, Joseph discovered his right to use “Gallo” on his cheese products was severely restricted by the court.

Or consider the saga of designer Elizabeth Taylor (not the actress), who launched a clothing line under her own name only to face legal action from the famous actress Elizabeth Taylor’s estate, which had already trademarked the name for perfume and clothing.

These stories aren’t unusual. The business landscape is littered with entrepreneurs who discovered—often painfully—that their own names weren’t quite as legally “theirs” as they assumed when it came to commerce.

The Name Game: Understanding the Legal Framework

Under U.S. trademark law, personal names occupy a peculiar middle ground. They’re not automatically protected like invented words (think Kodak or Xerox), but they’re not automatically available for business use either—even to the person who bears that name.

Here’s what you need to know:

Surnames Are “Descriptive” in Trademark Law

From a legal perspective, surnames are considered “descriptive” marks—they describe something about the goods or services (namely, who’s providing them). This is important because descriptive marks aren’t automatically protected under trademark law.

When you apply to register a trademark that’s primarily just a surname, you’ll likely face an uphill battle at the USPTO (United States Patent and Trademark Office). The examiner will flag it as “primarily merely a surname” and require proof of “secondary meaning” before granting registration.

What’s “Secondary Meaning”?

Secondary meaning occurs when a name becomes so associated with particular goods or services in consumers’ minds that it’s no longer just identifying a person—it’s identifying a business. Think McDonald’s, Ford, or Disney. These names originally belonged to people, but now they primarily signify companies and brands.

Proving secondary meaning typically requires:

• Five years of continuous, substantially exclusive use
• Significant advertising expenditures
• Strong sales figures
• Consumer surveys showing recognition
• Media coverage of your business

For small businesses just starting out, achieving secondary meaning can be a lengthy uphill climb.

When Your Name Isn’t Really “Yours” (Legally Speaking)

The most surprising aspect of name trademarks for many entrepreneurs is that someone else might have stronger legal rights to use your name in business than you do.

In the famous case of Taylor Wine Co. v. Bully Hill Vineyards, Walter Taylor (grandson of the founder of Taylor Wine Company) was legally restricted from using his own surname on his wine labels after the original family business was sold. The court found that while Walter had a right to use his name, that right was limited by the potential for consumer confusion with the established Taylor Wine brand.

The court’s solution? Walter could use his signature on the label, but had to include a disclaimer stating he was formerly associated with Taylor Wine Company but his new venture had no connection to it. He also had to display his first name prominently to differentiate from the original Taylor brand.

Similarly, in E. & J. Gallo Winery v. Gallo Cattle Co., Joseph Gallo (brother of the famous Gallo winery founders) was allowed to use his surname for his cheese business, but with significant limitations to avoid confusion with the wine brand.

A more recent example involves designer Karen Millen, who sold her fashion business and name rights in 2004 for £95 million, then tried to use her name for a new homeware business in 2016. The court ruled she had signed away her right to use her own name commercially when she sold the business.

These cases underscore a fundamental principle in trademark law: preventing consumer confusion trumps an individual’s desire to use their own name in business.

The “But It’s My Name!” Defense

Trademark law does recognize a limited “personal name defense.” Under the Lanham Act (the federal trademark statute), individuals have some right to use their own names in business, but that right isn’t absolute.

For the defense to work, you must demonstrate:

1. You’re using your actual name (not a similar variation)
2. You’re using it in good faith (not to capitalize on someone else’s reputation)
3. You’ve taken reasonable steps to minimize confusion

In practice, this defense has been increasingly narrowed by courts over the years. The days when simply saying “but it’s my name!” would shield you from infringement claims are long gone.

In Levitt Corp. v. Levitt, the legendary homebuilder William Levitt (who created the first Levittown developments) sold his company and later tried to use his name for a new home construction business. The court found that despite it being his actual name, he couldn’t use it in a way that would confuse consumers who associated “Levitt” with his former company.

Even more telling was the case of designer Paolo Gucci (grandson of Guccio Gucci, founder of the famous fashion house). After leaving the family business, Paolo attempted to launch his own line using his name. The court limited him to using “Designed by Paolo Gucci” rather than simply “Paolo Gucci” to prevent consumer confusion.

Strategic Approaches for Using Your Name

If you’re determined to use your name in business despite these challenges, consider these approaches:

1. Conduct a Thorough Trademark Search

Before investing in branding, signage, and marketing, conduct a comprehensive trademark search. This goes far beyond a quick Google search—it involves searching federal and state trademark databases, business registrations, domain names, and common law uses.

A professional search can identify potential conflicts early, allowing you to adjust your branding strategy before making significant investments.

2. Make Your Name Distinctive

If you discover potential conflicts but still want to use your name, consider making it more distinctive:

• Add descriptive elements: “Smith Digital Marketing” instead of just “Smith”
• Use your full name: “Jennifer Wilson Designs” rather than “Wilson Designs”
• Create a stylized presentation: Using unique fonts, colors, or capitalization
• Combine with non-name elements: “Blue Horizon by Johnson”

Calvin Klein successfully protected “CK” as a distinctive presentation of his name, showing how stylization can create stronger trademark rights.

3. Consider Geographic Limitations

Courts sometimes allow personal name use with geographic limitations. For example, if “Anderson Accounting” exists in New York, you might be able to operate “Anderson Accounting of Phoenix” if you limit your services to Arizona.

In Brennan’s, Inc. v. Brennan’s Restaurant, the court allowed multiple “Brennan’s” restaurants to operate in different cities with appropriate geographic modifiers to distinguish them.

However, in the internet age, geographic distinctions are increasingly difficult to maintain.

4. Use Disclaimers

In some cases, courts have allowed personal names to be used with appropriate disclaimers. Your branding might need to explicitly state: “Not affiliated with [competing brand].”

In the aforementioned Taylor Wine case, Walter Taylor was required to include disclaimers clarifying that his new wine venture had no connection to the original Taylor Wine Company.

The effectiveness of disclaimers varies widely depending on the specific situation and the prominence of the disclaimer.

When You Sell Your Named Business

If you’ve built a business around your name and later decide to sell, be prepared for restrictions on your future use of your own name in business.

The sale of a business typically includes its goodwill and intellectual property, including any rights to the business name. Courts generally enforce non-compete agreements that restrict the seller from using their name in similar businesses for a reasonable period.

The McDonald brothers learned this lesson the hard way after selling their hamburger business to Ray Kroc. They tried to open a new restaurant using their name and were legally prohibited from doing so.

Fashion designer Elizabeth Emanuel (who created Princess Diana’s wedding dress) sold her business, including the rights to her name. When she later tried to market clothes under her own name, the court ruled she had signed away those rights when she sold the business.

Another cautionary tale comes from Masaharu Morimoto, the famous Iron Chef, who lost the right to use his own name in New York after selling his interest in “Nobu Matsuhisa’s Restaurant” and related businesses.

If selling your name-based business, carefully consider the contract terms regarding your future ability to use your name commercially. Some options include:

1. Negotiating a limited license back to use your name in specific, non-competing contexts
2. Reserving rights to use your name in certain geographic areas or industries
3. Including a sunset provision that returns name rights to you after a specific period

Real-World Strategies for Small Business Owners

Based on these legal realities, here are some practical recommendations for small business owners considering using their names:

If You’re Just Starting Out:

1. Consider alternatives to your surname alone. Combine it with descriptive terms or use a creative brand name instead.
2. Invest in proper clearance searches. A few hundred dollars spent on searches can save thousands in rebranding or litigation costs later.
3. Register your trademark early. Even if you face hurdles due to the “primarily merely a surname” rule, starting the process early gives you the best chance at establishing rights.
4. Develop a backup name. Always have a Plan B ready in case conflicts arise with your name.

If You’re Already Using Your Name:

1. Monitor for conflicts. Set up trademark monitoring to catch potential problems early.
2. Document your use. Keep records of when you started using your name, advertising materials, sales figures, and customer testimonials—all valuable if you need to prove secondary meaning.
3. Consider registration on the Supplemental Register. If your name mark isn’t distinctive enough for the Principal Register yet, the Supplemental Register provides some benefits while you build secondary meaning.
4. Build distinctiveness. Consistently use your name with the same stylization, fonts, and colors to build consumer recognition.

The Balancing Act

Trademark law attempts to balance competing interests:

• An individual’s right to use their own name
• A business’s right to protect its established brand
• The public’s right not to be confused about the source of goods or services

As these numerous legal battles demonstrate, when these interests collide, the courts typically prioritize preventing consumer confusion above all else.

The outcomes can sometimes seem unfair. After all, few things feel more personal than your own name. But courts tend to look at the situation from the consumer’s perspective rather than the business owner’s emotional attachment to their name.

Is Using Your Name Worth It?

Given these complications, you might wonder if using your personal name is worth the potential headaches. The answer depends on your specific situation:

Potential Benefits:

• Instant authenticity and personal connection
• Built-in story for marketing purposes
• Easy recognition for clients who know you personally
• Natural fit for professional services and artistic endeavors

Potential Drawbacks:

• Limited trademark protection initially
• Risk of conflicts with existing brands
• Complications if you want to sell the business later
• Potential for personal reputation to affect business (and vice versa)

Some businesses have thrived with personal names—think Ralph Lauren, Calvin Klein, and Martha Stewart. Others have found greater success with invented names like Google, Amazon, and Zappos that avoid the legal complications of personal names entirely.

Paul Newman’s food products (Newman’s Own) became a success story in part because his celebrity name recognition provided instant credibility. Conversely, when chef Wolfgang Puck licensed his name widely, some critics argued it diluted his brand’s exclusivity.

The Bottom Line

Your name is deeply personal, but in the business world, it’s just another trademark—subject to the same rules and limitations as any other brand identifier. Before committing to using your name for your business, understand the legal landscape and weigh the risks and benefits carefully.

And remember the costly lessons learned by entrepreneurs like Walter Taylor, Joseph Gallo, and Elizabeth Emanuel: sometimes the “right” to use your own name comes with unexpected costs and complications.

Need guidance on naming your business or protecting your brand? Contact Harrigan IP for a consultation. Our flat-fee trademark services provide clear pricing and real protection for small businesses navigating the complex world of intellectual property.