Trademarking Personal Names
NARRATOR: Margaret Jacobs runs an accounting practice.
NARRATOR: Margaret wants to register her business name "MARGARET JACOBS". She is calling Trademark Factory.
MARGARET (calling the lawyer): Hello, I would like to register my trademark MARGARET JACOBS. That's my name and I use it to run my accounting business.
TRADEMARK FACTORY: Hello Margaret, I am glad you called and I will be happy to assist you.
Unfortunately, in Canada, while you can use your personal name to run a business you can't register a trademark that consists only of your full name or your last name.
MARGARET: How about simply JACOBS?
TRADEMARK FACTORY: No, like I said, if the trademark is nothing but your last name, it's not registrable.
MARGARET: Awwww... That's too bad...
TRADEMARK FACTORY: Hold on, there are some ways around this rule.
MARGARET: Like what?
TRADEMARK FACTORY: If your trademark consists of more than just your name, it may become registrable.
MARGARET: So, can I register MARGARET JACOBS ACCOUNTING?
TRADEMARK FACTORY: Yes.
TRADEMARK FACTORY: You can also use your first name alone as it does not violate the rules.
MARGARET: Can I register MARGARET or MARGARET'S or MARGARET'S ACCOUNTING?
TRADEMARK FACTORY: Yes, these are all perfectly registrable trademarks. You can also combine your last name with the name of your partner if you have one.
MARGARET: I'm working with my daughter. Can we trademark JACOBS & JACOBS?
TRADEMARK FACTORY: Yes!
MARGARET: Thank you.
TRADEMARK FACTORY: There are some other exceptions. If the surname has another meaning or is a dictionary word and is not just a surname, it can also be registered.
TRADEMARK FACTORY: For example, in a famous trademark case, the applicant tried to register ELDER and got rejected. Elder is a surname but also a dictionary word with several different meanings. Dictionary meanings of the word were significant. It was held that the trademark was registrable as it had another meaning.
MARGARET: Good to know. I think I will probably go with MARGARET JACOBS ACCOUNTING.
TRADEMARK FACTORY: No problem, before we go ahead and file an application, I will need to do a search to make sure there are no confusing marks on the Register. I will let you know the results.
MARGARET: Sounds good. Bye, bye.
