Legal Question in Business Law in California

Re: Does the use of a personal name constitute a service mark when not used as a

First, trademark law does not permit registration of a service mark or trademark that consists primarily of a surname, unless the name has acquired 'secondary meaning'. Lanham Trademark Act, 15 USC 1052(e)(4). Thus, neither name is eligible for recognition as a service mark under applicable statutes.

The common nad statutory law of unfair competition will apply, however.

Over the years, courts have decided a large number of cases with the same or very similar facts to those you present, applying fairness standards in reaching their decisions.

One can say for sure (a) everyone has a right to use his name in identifying or promoting his business, and (b) that right must be balanced by the right of someone with the same or similar name and a well-established reputation to be free from unfair infringement or confusion.

In practice, this has required courts to tailor injunctions carefully, to achieve the best possible balance between the conflicting rights.

In your situation, a court would probably not force either party to relinquish use of the personal name entirely, nor would the court allow the recent entrant into the field to use the shared name in a way that was clearly confusing. An injunction requiring the recent entrant to further identify and distinguish himself would be a distinct possibility. The prospective plaintiff should consult a local intellectual property or unfair competition specialist for a further assessment of the likely cost to litigate and the potential for a successful outcome.