The personal brand is a popular topic these days. Personal branding focuses on an individual’s assets, strengths, skills and characteristics, and how they are perceived, and to be marketed to the public. A registered trademark can be important for the individual’s name used as a personal brand, not only for celebrities but also for individuals within their professions who provide goods and services under their personal brand in the digital marketplace.
The notion of the personal brand was popularized after Tom Peters’ article, “The Brand Called You,” appeared in Fast Company in 1997. Peters stated: “The Web makes the case for branding more directly than any packaged good or consumer product ever could. Here’s what the Web says: Anyone can have a website.”
Entertainers, athletes and celebrities come to mind when one thinks of a personal brand. Public figures are typically highly paid in their professions and garner even greater income from endorsements. Many create their own branded products. Celebrities often protect a personal brand by securing a registered trademark.
Andy Warhol, the famed 60’s pop artist is an early example of how the individual celebrity and personal brands intersect. With the advent of social media, personal branding has expanded from the red carpets of Hollywood to the corridors of Wall Street, Main Street and social media influencers. Celebrity abounds.
Personal brands for professionals is a profession unto itself. Personal branding is now a topic for professionals such as doctors, attorneys, real estate professionals, and other service providers. The Definitive Guide to Personal Branding and The Complete Guide to Building Your Personal Brand are but two examples of the dozens of writings about personal brands. And then there is Forbes “10 Golden Rules of Personal Branding.”
The personal brand is not just about goods and services. It usually begins with a quality or attribute associated with the individual. In crafting a personal brand, finding and using the “voice of your brand” is helpful.
Many individuals achieve prominence within their niche or specialty online, many attaining a global reach by means of live events, online webinars, product launches, and social media followings. An individual can protect the personal brand with a registered trademark for workshops, training, a series of books, audio and video recordings, and websites providing content and blogs.
Why obtain a registered trademark for the personal brand?
Individuals with an Internet following, performers, actors and athletes are typically more vulnerable to cyber squatters and online infringers. Three issues often plague the personal brand.
- Registration of the personal brand in an infringing domain.
- Use of the individual’s name or likeness on a site to market someone else’s products, either directly or through the purchase of the individual’s name as a sponsored ad word.
- Use of the individual’s name or creative work to create a false “implied endorsement.”
A registered trademark helps the personal brand owner deal with these issues. First, the registered trademark establishes the individual’s name as a legally protected brand for goods and services sold under the personal brand. A registered trademark also provides easy access to remedies for cybersquatting and online trademark infringement. Finally, a registration supplements remedies like the right of publicity, which is most useful in cases where a photograph or image of a celebrity is used without consent in connection with the sale of a product or service.
Does a Registered Trademark help the Personal Brand?
The registered trademark for the personal brand helps with unauthorized use in a domain name by a third party. The owner may file for arbitration with the World Intellectual Property Organization (WIPO) or the National Arbitration Forum, using the Uniform Domain Dispute Resolution Proceeding (“UDRP”). Read: 5 Things to Do in Case of Domain Hijacking.
The UDRP was created as an alternative to costly federal court litigation. One can secure ownership of the domain regardless of where the registrant is living in a low-cost, speedy remedy. This is because when anyone registers a domain, the registrant must consent to the jurisdiction of an ICANN-approved arbitration panel to decide domain ownership disputes.
In order to win a UDRP, the complaining party must prove three elements:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The registrant has no legitimate rights in the mark; and
- Registration was made in bad faith.
One proves the first element by means of having a valid trademark registration. In UDRP I filed involving the domain sylviasylviabrownehypnosis.com, the Panel stated: “In line with countless prior UDRP panels, the Panel finds such evidence [of a registered trademark] sufficient to establish the Complainant’s rights in its mark.” In short, a registered trademark is proof of the first element. Contrast this decision with cases in which a well-known person without a registered trademark is unsuccessful in recovering the domain because he or she cannot prove trademark rights in the name.
David Pecker, who has been in the news in recent times, is our example of someone who lost rights to his name for a porn site.
David Pecker and a Porn Site
David Pecker is well-known in media circles as the head of American Media, owner of the National Enquirer and Star. Pecker is better known in recent times for the “catch and kill” practice at the National Enquirer, i.e., purchasing negative stories and “killing the story” to prevent public exposure, in particular stories about President Trump.
Back in 2006, Mr. Pecker sued to recover the domain “www.davidpecker.com” from an individual who registered the domain containing links to various porn sites. The WIPO arbitration panel rejected Mr. Pecker’s claim since Pecker was unable to prove he had trademark rights in his name. The arbitrator stated the test is whether the individual’s name has been used for trade or commerce, or whether the Complainant had “ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services.” Pecker had not.
These examples emphasize the importance of a registered trademark to recapture domains stolen by hijackers, as well registrations containing your mark and used to promote competitive goods and services. Most personal brands have some service or product offering which can help qualify for a registered trademark.