Name your favorite Anna Mae Bullock song. Never heard of her? What about your favorite Tina Turner song? The latter name should sound familiar. While her 1986 autobiography “I, Tina” surprisingly made the 1993 film “What’s Love Got to Do With It?” seem lightweight, one notable fact from both is Tina Turner insisted on keeping her stage name: It was her brand and she’d made an entire career from it. And she’s not the only one.
Fans of “Love & Hip-Hop Hollywood” may be aware that reality star Ray J. trademarked his now-wife’s name, Princess Love, before she trademarked her logo. According to Season 3, Episode, 11, he purchased the rights to her name during one of their breakups. She then visited a lawyer to set up a prenuptial agreement to protect her assets, including her clothing, hair line and other products attached to her logo.
Blac Chyna may be in for a legal trademark battle, if Page Six is to be believed. According to the site, the Kardashians are none too thrilled to find out that Blac Chyna is trademarking her soon-to-be married name: Angela Renee Kardashian. The Kardashian sisters’ alleged rationale? The family’s brand will “suffer damage including irreparable injury to their reputation and goodwill” if Blac Chyna takes on the Kardashian name.
However, trademark name disputes and sales aren’t always from individuals. Instead of trying to hold onto trademarks, some people choose to sell them. Jimmy McMillan, the former political activist behind the “Rent Is Too Damn High” campaign, announced in 2015 that his trademark was for sale because he “decided to walk away due to the -0- zero support of the people.”
And companies like multimedia digital app Snapchat are battling it out with companies who are still trying to hold onto the professional support they already had. The wildly popular mobile app wanted to expand past its reputation for smartphone videos and rebrand itself as Snap Inc. Unfortunately for Snapchat, according to The Hollywood Reporter, a publicly traded company called Snap Interactive is willing to fight it out with them about acquiring the name Snap Inc. Snap Interactive reportedly filed a trademark lawsuit against Snapchat to avoid users being mistaken into thinking that the two companies have a joint venture. Products, URLs and a potential $25 billion initial public offering (IPO) are also part of the legal battle.
With careers, brand equity and billions at stake, protecting a trademark can be a critical business move for a celebrity or company. Tina Turner, Princess Love, Blac Chyna and Snapchat’s trademark issues raise questions about how can people protect their trademarks. The legal tactic a company or individual uses to protect a trademark depends on business growth.
Can a trademark be used if someone else owns it?
Tina Turner: “What’s love got to do with it?” For Tina Turner, retaining the rights to her stage name may have been all about business, especially in the startup phase of her solo career. When Ike and Tina Turner got divorced in 1978, she had very little money. Her stage name had significant monetary value.
Ike Turner was responsible for branding Anna Mae Bullock as Tina Turner. Tina explains in this video clip from “Oprah’s Next Chapter,” after she recorded the song “A Fool in Love,” that Ike changed/listed her name on records they created together as Tina Turner although the two were not yet married.
“If I ran away, Tina was his name,” Tina said. “It was patented, as you call it.”
“So he could own you?” Oprah said.
“So he could own me,” Tina said. “Ike was smart. He wasn’t an educated smart man, but he had common sense.”
For clarification, a name or logo used for a service or good cannot be patented. However, Tina needed to acquire the rights to the trademark “Tina Turner” from Ike so she could continue to perform under the stage name.
One way to acquire rights to a trademark that has already been registered with the United States Patent and Trademark Office (USPTO) is through an assignment. An assignment is a written agreement that transfers ownership of a trademark from one person or company to another. In Tina’s case, Ike most likely signed a contract assigning trademark ownership of “Tina Turner” to Tina so she could continue to use the name.
Interestingly, the trademark registration for “Tina Turner” indicates that trademark was first used in commerce in 1978. This is the same year Ike and Tina got divorced.
Do you have a trademark but aren’t ready to launch your business and use your trademark in commerce?
Princess Love: Like Tina Turner, Princess Love was also in the startup phase of her business career in the entertainment industry. She was not aware of the importance of protecting her brand. Unfortunately or Fortunately for Princess Love, Ray J trademarked her name before she could. Now that she is married to Ray J, hopefully he will just assign the trademark to her without making her pay to acquire the rights to her stage name.
Princess Love could have prevented Ray J from registering her trademark by filing an intent to use (ITU) application with the USPTO. An ITU is an application where an individual or company states that they have a good faith intent to use a trademark or service mark in the future. Typically, the individual or company has six months from filing an ITU with the USPTO to use the mark in commerce.
For startups and business owners who are in the research and development phase, an intent to use application is a way to protect a trademark before the company or individual is ready to use the mark in the marketplace.
Can you a sell a trademark if you no longer want it?
Rent Is Too Damn High: Referring back to Tina Turner’s trademark mentioned earlier, it is legally possible to sell a trademark. A trademark is affiliated with a business or a specified product. A trademark, which is a tangible item, can be “sold” through an assignment. An assignment is a written contract that transfers 100 percent ownership of the trademark rights to another individual or company. Trademarks can also be licensed. A license is when someone pays a fee to use the trademark.
The person who buys the ownership rights to the “Rent is Too Damn High” trademark can use the slogan for something random that is not affiliated with its initial purpose. Or, the trademark can be used for its original intent — the political party and/or the campaign to have a nationwide fixed rate for low rent.
Do you own a trademark and want to prevent others from using your trademark?
Kardashians: The Kardashians are an established brand and multi-million dollar business empire. Understandably, the Kardashians would want to protect their trademarks by preventing others from using a mark that would lead the consuming public to believe the Kardashians were affiliated with an unauthorized good or service. The distinctiveness of their Kardashian mark would be blurred if it is associated with Blac Chyna. Blurring happens when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Hopefully, the Kardashian sisters can work things out amicably and reach a settlement with their soon to be sister-in-law.
Snapchat: Snapchat is another established trademark with a billion dollar IPO on the line. Snap Interactive is not as widely known but has a valuable brand. Snap Interactive claims it was the first to use the mark Snap Inc. in the marketplace. Logically, they would want to protect their mark. Filing a trademark infringement lawsuit is a legal tactic that a business can use to prevent another business from using its trademark.
Have more trademark and business law questions? Contact J. Paye & Associates today.
Shamontiel L. Vaughn contributed to this blog. Find out more about her at Shamontiel.com.
The information contained here is intended to provide useful information on the topic covered but should not be construed as one-size-fits-all legal advice. Speak to an attorney specifically about your contractual agreement for specific terms and conditions.