In November 2021, the conservatorship that controlled Britney Spears’ personal and financial life since 2008 was terminated. While much of the media coverage understandably focused on the limitations of Spears’ ability to make her own medical decisions and control her finances, there is one asset that could be considered just as personal: her name.
For artists who are so popular they can be referred to by their first name, the ability to control her name as it is used as a trademark is particularly important. However, as with all trademarks, proper maintenance of those trademarks is required. A review of U.S. Patent and Trademark Office (“USPTO”) records indicates that Britney Spears previously owned multiple registrations of the mark BRITNEY SPEARS. Some of these applications were filed before 2008 and some were filed after the conservatorship began, signed on her behalf by a co-conservator. In 2018, in the midst of her conservatorship, these registrations in the U.S. and around the world were assigned to Baby One More Mark LLC, a Delaware limited liability company. The assignment documents were signed by the named co-conservators. Currently, Baby One More Mark is still the listed owner of Spears’ trademark registrations.
It is not uncommon for a holding company to own trademark registrations and so the assignment, by itself, does not necessarily reflect any decision by Spears regarding control over trademark rights. However, brands should be aware that the owner of a registration must be the entity that controls the use of the underlying trademark either through use or a license.
There are other instances in which someone may not have the ability to control trademark rights in their name. For celebrities who are minors, state law controls whether the minor can apply to register a trademark. If the state law allows minors to make contracts, sue, and be sued, the USPTO Trademark Manual of Examining Procedure Sections 803.01 and 1206.04(a) say they can also sign federal trademark applications.
For example, Kylie Jenner, Inc. filed applications to register KYLIE JENNER in 2011 for a wide variety of goods and services including perfume, clothing and entertainment services. Although this application was filed listing a corporation as the owner, Kylie Jenner was under 18, so the consent to use her name as a trademark was signed by her mother.
Individuals also can contract away their trademark rights. In 2009, the Court of Appeals for the Second Circuit determined in a long-running dispute between fashion designer Joseph Abboud and his former company that held that Abboud had assigned trademarks that incorporated his name and could no longer use his name as a trademark. The case was remanded back to the trial court to parse out what was acceptable use of his name by Mr. Abboud.
These examples illustrate some considerations around trademark ownership for an individual’s name. Three names that can help you with these and other trademark questions are Jacqueline Patt, Stacey Watson, Katrina Hull and our team at Markery Law.