In today’s business landscape, trademarks are an essential aspect of any brand’s identity. They provide consumers with a quick and easy way to identify a product or service, and they help businesses establish and protect their unique identities in the marketplace. However, before applying for a trademark, it is crucial to conduct a trademark search report.

Burger King’s and Katy Perry’s recent loss is evidence of just that. In today’s blog post, we’ll be discussing the importance of conducting a trademark search report and why it is essential for any business looking to establish a unique brand identity. We’ll be using Burger King and Katy Perry as our examples.

What Do Burger King and Katy Perry have in common?

Katy Perry as a hamubrger at the Met Gala 2019

As a result, Katie filed suit against the megastar for trademark infringement. And as of a couple days ago, Katie was awarded financial damages against Katy Perry in an amount to be determined next month.

For trademark purposes, it doesn’t matter that the spellings aren’t exactly the same. If two brands still have the same phonetic pronunciation and are providing similar products/services, the two brands can not co-exist. This would lead to consumer confusion, which is wholly counterproductive to trademark law.

Now, I honestly can’t say that I’m surprised that Katy Perry ran into a conflicting trademark. She is using a name that is so common. And I imagine there’s so many people with the exact spelling or some other variation of both “Katy” and “Perry”, who dream of being business owners. When a name is that common, you have to be first to register it!

And so, in addition to this being a reminder to build a distinctive brand name, this tale also demonstrates the importance of conducting a trademark search report.

What is a Trademark Search Report?

Before applying for a trademark, it is crucial to conduct a comprehensive trademark search report.

A trademark search report is a comprehensive search conducted to determine whether a proposed trademark is available for use and registration. It helps identify any existing trademarks or competitors that may conflict with your proposed trademark.

This report typically includes a search of both registered and unregistered trademarks in the relevant jurisdiction(s) and can provide information on similar or identical marks, pending applications, and expired trademarks. These reports also include information on common law trademarks, which are unregistered marks that have been used in commerce, but have not been registered with the relevant trademark office.

The trademark search report is an important step in the trademark registration process as it (1) helps to ensure that the proposed trademark is distinctive and unique enough to be registered, and (2) helps prevent potential legal issues if the proposed mark infringes on any existing trademarks.

These reports are provided by trademark attorneys with expertise in trademark law and trademark searching. With the help of powerful algorithms, we are able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, worldwide web results, social media, and more.

Benefits of a Trademark Search Report

Now that you understand what a trademark search report is, let’s discuss the benefits of this report for your business’ plans:

1. Saves Time & Money

One of the major benefits of conducting a trademark search report is saved time and money. Conducting a tradmeark search report can prevent you from investing time and resources into a trademark that cannot be registered or protected.

This means that your trademark search report report should ideally be completed prior to investing any money into a mark, whether it’s your brand name, logo, slogan, or some other source-identifier! It makes little sense to invest money into a mark before learning whether it will be available for your exclusive use.

Trust us. The last thing you’ll want to hear is that you’ve invested time and money into a trademark that cannot be used, and you will need to start from scratch. These are always difficult conversations to have, especially if you have already started to develop an attachment to your mark.

So after you’ve brainstormed a brand name, your immediate next step should be to conduct a trademark search report, not hire a web designer or graphic designer! Unfortunately, many business owners tend to do this out of order because they are unaware of the trademark process. So, if you’re a business owner reading this or know of any entrepreneurs, please pass this info along to your entrepreneurial friend.

2. Avoids Legal Issues

As mentioned previously, conducting a trademark search report also helps to prevent legal issues down the line.

A trademark search report can help identify any potential conflicts or infringement with existing trademarks. Having this report can prevent a business from unknowingly infringing on another company’s trademark and potentially facing legal action or even having to rebrand entirely.

In 1971, resources were limited. Burger King may not have reasonably been able to locate the local Australian restaurant operating under the same name.

However, the reports of the 2000s absolutely can identify these users! Sometimes, even a simple Google search can reveal so much. So Katy Perry’s team may not be able to share the same excuse.

It’s unclear whether Katy Perry discovered her competitor through a search report. However, what IS clear is that (1) Katy selected a non-distinctive name, as many celebrities who operate a brand under their personal names do; and (2) though she and her team were aware of the conflicting user, they proceeded to willfully infringe on Katie’s trademark rights withour regard to their previously failed attempts.

Katy’s team should have just found a more creative way to provide merchandise that excluded use of “KATY PERRY”. I’m sure this might be difficult, but these creative geniuses can figure something out! And it would have been cool for her to market this merchandise as something made exclusive to the fans of that continent. Now, unfortunately, they’ll have to pay up and rebrand if they wish to sell merchandise in Australia again.

This is why it’s best to rebrand at the onset before you’ve invested any more money into a trademark rather than rebrand after making large expenses and an expensive lawsuit.

3. Identifies Weaknesses

Last but not least, a trademark search report is important because it can help a business identify any potential weaknesses in their proposed trademark.

It is absolutely crucial that any proposed trademark submitted for registration is distinctive and unique enough to stand out in the marketplace. Conducting a trademark search report can help a business owner identify any similar trademarks or potential issues that could weaken their proposed trademark’s strength, as well as, provide insight into a business’ future expenses.

For example, if the report shows that there are many competitors with a “confusingly similar” trademark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is valuable information you should know prior to investing too much into your trademark and brand.

All the more reason to conduct your report PRIOR to hiring a professional to build your mark and/or marketing under your mark.

Conclusion

Photos from my time spent in Sydney, AU

Fall 2013 & Feb-Nov 2015

You wouldn’t believe the amount of times that I speak with entrepreneurs who unknowingly have named their business after themselves without understanding the legal ramifications of doing so.

And I can’t fault them from not knowing.

There’s just not enough education out there.

And with celebrities and other public figures naming every business venture they pursue after themselves, there’s no one telling the general public why it’s not safe to follow in their footsteps.

There’s no one telling them why they shouldn’t be creating eponymous brands.

Remember, these celebrities have lawyers and advisors who alert them of the dangers, who aid them in every aspect of their livelihoods! But us normal people?? We don’t have trusted professionals helping us with every decision we make.

We have to be resourceful, diligent, and hope we’re making smart decisions.

So, here I am on my soapbox for the 1000th time telling you, the resourceful entrepreneur, or anyone reading this – “PLEASE STOP NAMING YOUR BUSINESS VENTURES AFTER YOURSELF”.

And of course, I’m going to tell you why…

If you are a visual learner, you may enjoy watching the following video. It covers some of the main points that we’ll be discussed in this post.

What Does It Mean To Create a Self-Named Brand?

Many entrepreneurs mistakenly believe that naming their brand after themselves is the only way to feel a connection to their brand and to truly represent their legacy.

However, what most fail to realize is when you name your business the same as your personal name, your legal name no longer belongs to YOU. It belongs to YOUR company as one of its assets. In fact, it becomes one of your business’ most valuable assets aka a trademark.

We’ve talked about what’s a trademark before so review this blog post or our Glossary if you’ve missed it or need a refresher.

And because you’ve now made your personal name into a trademark, you stand a far better chance of losing the rights to your personal name once investors and big bucks get involved.

It happens all the time!

I often compare it to the notorious 360 music deals we always hear musicians complain about.

So often, eager entrepreneurs and creatives start an amazing brand, and name it after themselves for “legacy” or vanity reasons. And when the brand is growing bigger and better than ever, investors start getting involved and one of two things are likely to happen.

 Scenario 1

Either these creatives fail to truly read their contracts and sign over the rights to their name and likeness, like wedding dress designer, Hayley Paige, (formerly of Say Yes to the Dress) in exchange for more publicity, resources, money, fame, or whatever enticing offer.

Hayley Paige vs. JLM Couture

In fact, in a recent Instagram post detailing her ongoing legal battle to reclaim her name, Hayley states: “I signed an employment agreement, which I believe allowed my name to be registered as a trademark for a bridal collection I designed.”

And this is very likely the case! However, Hayley failed to understand that the trademark is an asset of the business, not her own. Had she hired a lawyer to properly advise her before signing this contract, she would have understood that using her personal name as her business name legally changes the relationship to your name.

Watch Hayley explain her current legal situation below.

Scenario 2

Or these entrepreneurs lose the controlling share of their business to investors. And once that happens, beware of any disputes or disagreements with your investors because your name belongs to the company.

These investors can outnumber and vote to do whatever they deem is best for the business even if it’s against your wishes or morals, like Chloe Coscarelli of fast-casual vegan chain by CHLOE, who has been fighting to regain control of her name and business since 2016 after disagreeing with her business partners’ decision to open non-vegan restaurants under the by CHLOE name.

And it’s not just eager young entrepreneurs at risk!

It happens to celebrities too! Celebrities who should know better with their teams of savvy lawyers and advisors! However, I can only assume that these celebs are willing to take such risks because they understand that their name and likeness holds so much weight.

These celebrities hope (and understand) that their “cool factor” does all the selling and convincing for consumers to buy their products/services regardless of the quality.

And so, they’ll continue to use their name and likeness as necessary if they really wish to branch out into different ventures and build an empire, like recent Forbes-credited billionaire, Rihanna Fenty.

Why You Don’t Name Your Brand After Yourself

Because what’s worse is that once you’ve lost the rights to your name, it’s gone forever.

It will continue to belong to the company in perpetuity as long as the company is still in business because remember, a trademark lasts forever!

And you will NOT be able to use your personal name to market or brand your next business venture if it’s within the same or similar industry.

For example, statements, like “a new line by Jaleesa Johnson” or “by Jaleesa Johnson” or anything along those lines will be strictly OFF-LIMITS.

To do so, would be to unjustly profit off the reputation and success of a company with its’ own proper trademark rights. It will not matter that it was originally your name or that you helped build the brand. You are now practically a complete stranger.

And what’s more – as consumers, we often don’t even realize that the original owner may no longer involved in their brand, which can make us incorrectly attribute strange decisions or company mistakes to the person and their reputation. Thus, further harming the owner after the fact…

And unfortunately, many celebrities and brands have fallen victim to this – Hayley Paige, Chloe Coscarelli, Joseph Abboud, Stuart Weitzman, the late Kate Spade, P. Diddy, Zac Posen, and many more.

After losing her first business, Kate Spade legally changed her name to Kate Valentine once she lost the rights to her name in order to start her 2nd fashion brand, Frances Valentine.

Zac Posen, though warned by one of his girlfriends not to name his brand after himself, still chose to do so. Now, thankfully he still has a role in his brand, but he has regretted his decision to name it after himself because “whoever is investing is in control”.

P. Diddy was only recently able to reclaim ownership of Sean John apparel brand for $7.551 million after selling a majority interest in his company in 2016 and retaining only a 10% stake. Since doing so, Diddy has been in and out of court with majority shareholders for YEARS fighting to regain control after repeatedly disagreeing with their business’ decisions.

And according to Hayley Paige,

“It is not enough for JLM that I cannot work and cannot use my own birth name. Now, JLM wants to strip everything from me — including my right to speak and draw. JLM wants to silence me in the public domain and financially drain me. That is neither right nor just.”

Additionally, Hayley claims that she has been unable to “maintain any employment” as she is unable to design and/or enter bridal until August 2022, and has missed out on opportunities, including tv and commercial appearances, due to her inability to use her own name.

Even Hayley’s social media campaign to legally change her name, like Kate Spade, has been thwarted by her former employers as a breach of her preliminary injunction.

And P.S. if you didn’t know, this is not unique to Hayley; her current position is VERY common in these sorts of contracts! [Essentially, the original owner has transferred rights to their name to their business via trademark and should a dispute between investors and original owner ever arise, the owner is estopped from using their name and working in their industry for a specific time period for non-compete reasons. This is standard industry practice.]

So, in summation, you don’t name your business after yourself because of legacy. Your legacy is actually more at risk when your business is a clone of yourself. 

What Should You Name Your Business Instead?

So now you’ve read all the legal ramifications, you’re probably wondering, what should you name your business instead?

If you’re looking to rebrand, the first thing you should consult is the Spectrum of Marks. The spectrum will help you understand what it means to create a strong business name capable of trademark registration.

And though technically, an individual’s name would fall into the fanciful/arbitrary side of the spectrum, the legal ramifications of this post, should persuade you to avoid using your name.

So for the reasons above, we STRONGLY encourage all entrepreneurs to create names that meet the spectrum, but avoid putting their personal name at risk.

The two exceptions we’ve created for this no-personal name rule are:

 (1) If your personal name is required in your business name as part of your profession’s code of ethics and/or license requirements, like in the medical or legal field; or

(2) If you, i.e. your person, is the product/service you’re selling. Think bloggers, motivational speakers, content creators, etc. If you’re operating as a celebrity would, where your personality and likeness is the brand, I can understand the decision to name your business after yourself.

However, if you’re providing some other service or a product, there is no need for you and your business to share the same identity.

Your business should be an extension of you, not your clone!

And consider this: Do you plan to be the only person providing the product/service to customers or will you hire a team one day? Do you really want to create the expectation in customers’ minds that they will work directly with you as you expand and grow? If yes, don’t let us stop you!

However, if you do foresee yourself expanding, our advice: Rebrand.

In fact…

💡 If you really LOVE the sound of a “name”, consider naming your business as you would your baby. We don’t mean create a junior! Give your brand a new identity.

Your brand can still have elements of you and your personality without sharing your personal name. After all, parents can share these features/similarities with their children without sharing the same identity as their child.

Need More Help?

If you’ve decided to still name your business after yourself OR a new baby name, you may want to pick up our eBook, 10 Mistakes to Avoid for a Smart & Successful Brand Name.

In this eBook, one of the topics we cover is the likelihood of successfully trademarking a personal name, i.e. first name, first & last name, two or more last names, initials, and other variations. Take advantage of our 50% off limited time offer!

Or if you need our help selecting an entirely new business name, check out our Brand Name Consultation, a 60 Minute Legal-Marketing hybrid session designed to create a name that is not only trademarkable, but also marketable within 1 hour. It’s our 1 Hour Trademark. Book below.