By James H. Harris III*
More than just occasionally, entertainers adopt stage names. They do so because they believe the new name will add a luster and specific identity to their careers. Thus, Harold S. Jenkins became Conway Twitty.
A stage name, of course, is a type of mark that an entertainer uses to identify himself or herself as a business enterprise. In most states, including Tennessee, a mark, in general, includes any trademark or service mark entitled to registration under the applicable state trademark act, regardless of whether the mark is actually registered.
A trademark in Tennessee is “…any word, name, symbol, or device, or any combination thereof, adopted and used by a person to identify goods made or sold by the person and to distinguish them from goods made or sold by others.” A service mark is similar to a trademark, but it is “a mark used in the sale and advertising of services of one person to distinguish them from the services of others.”
Finally, there is a trade name. “Trade name” means a word, name, symbol, device, or any combination thereof, used by a person to identify the person’s business, vocation, or occupation and distinguish it from the business, vocation, or occupation of others.
As can be seen from these definitions, the terms are inclusive rather than exclusive. A service mark differs from a trademark in that it identifies services rather than goods. A service mark or trademark can also be a trade name.
Common law protects the rights of the owners and users of unregistered trade names. In Tennessee, the law specifically provides that “Nothing in this part shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.” A trade name is entitled to the same protection as a trademark or a service mark. For all practical purposes, the legal principles governing trademarks and trade names are virtually identical.
Personal Names In Trade Names
A trade name which consists of a personal name (first name, surname, or both) is entitled to legal protection when it attains secondary meaning. For example, a department store called The Harris Company acquires a secondary identification in the minds of the consuming public by the owner’s initial appropriation of the name and his continual use of the name in connection with the business enterprise of the store.
Because there may be thousands of persons with the same name, be it first name or surname, such names are not considered to be inherently distinctive trademarks. The work Harris used as a trademark or as part of a trade name would probably signify to the public only that someone of this name was connected with the business. However, when the requisite degree of notoriety attaches, as in the case of Ford for automobiles, the use of Harris becomes part of the trade name and the courts are likely to award some form of injunctive relief against a latecomer – one with the same name – who adopts the same or a confusingly similar name as a trademark or as part of a trade name.
When that happens, even though there be thousands of Harrises in the immediate area, only one has the right to use the name The Harris Company. All others who adopt the name or a confusingly similar one are infringers.
There is, of course, the romantic, ruggedly individualistic notion that an individual possesses some type of legal right to use his or her personal name as a trademark or service mark. A person frequently feels that “It’s my name and I can use it as I choose.” This influence, which is not present where other types of marks are involved, led the courts in early decisions to characterize the right to use one’s name in business as a “sacred” or “absolute” right. No such right has ever been thought to exist with respect to other kinds of marks, such as slogans or designs.
The United States Supreme Court in 1905, upholding the defendant’s right to use the name “Remington” as part of a corporate name, stated that “…[I]n the absence of contract, fraud or estoppel, any man may use his own name, in all legitimate ways, and as the whole or a part of a corporate name.”
This view quickly died. The Supreme Court began to uphold qualified injunctive relief in a number of surname cases, and it ultimately modified its earlier view. Referring specifically to the Remington case, the Court in 1914 shifted from favoring the interest of the alleged infringer to favoring the interest of the public:
But, whatever generality of expression there may have been in the earlier cases, it is now established that when the use of his own name upon his goods by a later competitor will and does lead the public to understand that those goods are the product of a concern already established and well known under that name, and when the profit of the confusion is known to and, if that be material, is intended by the later man, the law will require him to take reasonable precautions to prevent the mistake ….
LE. Waterman Co. v. Modern Pen Co., 235 U.S. 88, 35 S. Ct. 91, 59 L. Ed. 142 (1914).
The public interest is now generally regarded as outweighing whatever interest an individual might have in using his own name. For this reason, courts more recently have viewed personal name trademarks as being no different from any other. The Fifth Circuit stated:
… [A] man has no absolute right to use his own name, even honestly, as the name of his merchandise or his business. As such it becomes a trade name or service mark subject to the rule of priority in order to prevent deception of the public.
John R. Thompson Co. v. Holloway, 366 F. 2d 108 (1966).
Tennessee’s Personal Name Cases
The granddaddy of all name cases in Tennessee is M.M. Newcomer Co. v. Newcomer’s New Store, 217 S.W. 822 (1917). Shortly after the close of World War I, Mr. Newcomer left one corporation and started another. As the style of the case suggests, both businesses used Mr. Newcomer’s personal name in their trade names. The Supreme Court stated its findings in the leisurely language of the time:
It further appears that, notwithstanding the great confusion growing out of the similarity of the names of the two corporations, and the efforts of the complainant to prevent this confusion, the defendant persisted in retaining the name “Newcomer” in connection with its business, which fact, we think, showed a clear intention on its part to benefit by the extensive previous advertisement for a long period of years of said name in connection with the business of complainant. If this were not the intention and purpose of the defendant, then all of the confusion which has resulted to both complainant and the defendant could have been easily avoided by the defendant adopting a corporate name without the association of the name
“Newcomer” therewith. Id. at 824
It then confirmed the two lower courts’’ holdings that
… the persistent use by the defendant of the name “Newcomer” in connection with its business was for the purpose of misleading the public and inducing complainant’s customers to patronize the defendant under the belief that they were patronizing the complainant.
Id. at 825
From the court’s analysis came the rule:
The extent to which an individual may use his own name is not unlimited. He cannot resort to any artifice or contrivance intended to delude the public as to the identity of his business or products….
A man must use his own name honestly and not as a means of pirating upon the good will and representation of a rival by passing off his goods or business as the goods or business of his rival who gave the name its reputation and value. No one will be permitted to use even his own name with the fraudulent intention of appropriating the good will of a business established and built up by another person of the same name.
The court emphasized that this principle was not a strained or overly-philosophical legal conceit. To the contrary,
The legal principles which are controlling here are simply the principles of old-fashioned honesty. One man may not reap where another has sown nor gather where another has strewn.
Id. at 825. [Citations Omitted].
All Tennessee cases on uses of trade names after Newcomer have reaffirmed these principles. Despite the consistency of the courts’ opinions, however, there is still in Tennessee a nod to a bygone day. In a case called Kay Jewelry of Chattanooga v. Morris et al., the Court of Appeals in the Eastern Division recognized in 1943 the “general right of a natural person to use his family name in conducting business ….” This general right is subject to all of the limitations described above, however, so the apparent respect for a person’s name may be less than it appears from the court’s simple statement of the perceived right.
The better view, in my opinion, is that, in this day of mass and immediate marketing, a personal name is really of no greater importance, nor is it entitled to any more sanctity, than any other mark. After all, none of us has earned our names; we simply received them at birth. If we wish to add value to our name, we should be required to associate the name with a particular activity or goods, and further, to use our name only in a way that shows respect for all other existing trade names.
James H. Harris III has been my partner for over ten years. He is a member of the professional association of Harris, Martin, Jones Shrum, Bradford & Wommack. A 1967 graduate of Vanderbilt Law School, he has practiced on Music Row since 1975. Mr. Harris is also a member and former trustee of the Copyright Society of the United States.