The Licensing Journal: Nicknames as Trademarks

Articles / October 1, 2009

Cleveland Partner Deb Wilcox authored an article for The Licensing Journal in October 2009 entitled, "Nicknames as Trademarks."

The article discusses the ability to trademark nicknames and the "longstanding trademark principle that a person or business can acquire trademark rights in a nickname created by the public."

Wilcox describes trademarking nicknames as something that can be created by a brand owner, the press, consumers, or the general public. "When a nickname reaches the point where it is so popular that the public associates it with a specific individual or company and its use by another would likely cause confusion, the nickname becomes protectable under the law of unfair competition in the same manner as a trademark originally adopted by the individual or company," writes Wilcox. In other words, when a nickname because interchangeable with the proper name of a product or figure, it can be protected just as is the initial product of figure's trademark.

Wilcox cites a number of examples of this phenomenon, including reality television personality Nadya Suleman, more commonly known as "Octomom,"and sports franchise nicknames that move with the relocation of a team, such as occurred when the Los Angeles Rams moved to St. Louis. Not only did the team move, but the franchise name moved, as well, making it impossible for others to trademark the nickname "St. Louis Rams" for use in a cartoon.

Registration can be refused by companies or individuals seeking to trademark a phrase that may imply affiliation with a popular figure based on nickname, with the US Patent and Trademark Office (USPTO) stating that, in such instances, the name "is so famous that consumers would presume a connection."

"In short," Wilcox concludes, "nicknames of characters or other brands, even those created by the public, can prove to be valuable assets…To obtain a federal registration, though, the brand owner needs to use the term directly."