from the surfs-down dept
It’s frankly sort of ridiculous, but the state of trademark protectionism that exists today has rendered the trademarking of a person’s own last name somewhat unwise. Given the low bar that has unfortunately been set in terms of judging real or potential customer confusion in the marketplace, simply using one’s own name for a commercial brand rife with danger where trademarks are concerned. Something of an example of this is currently taking place between a small New York clothing designer named Thaddeus O’Neil and famed surf wear manufacturer O’Neill. The latter has been blocking a trademark application by O’Neil for over a year now.
In May of 2016, O’Neil the person filed a trademark for the name of his company, Thaddeus O’Neil, as well as his T.O. logo, which looks like an upside down Venus symbol. O’Neill the company, filed a motion in the U.S. Patent and Trademark Office asking the court to block the trademark, claiming it was “likely to cause confusion.” In June, the USPTO stated that the motion was not sufficient to grant the motion, however O’Neill the company appealed and the decision is now pending. The game of legal ping pong continues.
Let’s get this out of the way: the two brands have little in common other than both selling clothing — very different kinds of clothing — and having a variation of a common last name. The branding for each company is wildly different and poses no threat to even the most moronic and hurried among us.
Those brands are nothing alike and they don’t sell to similar marketplaces. Thaddeus O’Neil’s branding includes his entire name. The lengths O’Neill is going to to block his trademark application seem rather heavy-handed given that, but it adds to the strangeness of it all that Thaddeus O’Neill can’t name his brand after himself. And that strangeness birthed one of the best quotes I’ve ever been able to include in a Techdirt post.
“I’m a designer, and this is my work,” O’Neill said in an email to The Hollywood Reporter. “Why can’t the clothing I create bear my own name? We have Alexander Wang and Vera Wang coexisting unproblematically in same space. Wang is like Smith in China. They get along just fine and so do their customers. O’Neil is the Wang of Ireland.”
O’Neil is the Wang of Ireland is something of a gem, but he’s also plainly correct. Ownership over so common a last name at best should be wielded with care, if such a trademark ought to have been granted at all. Similar to how high the bars for infringement trademarks utilizing geographical areas are, so too should trademarks utilizing common last names be forced to reserve protectionism for when real confusion is likely or evident.