Posted by Post authored by Lian Osier
It may seem more convenient to simply brand your products using your own name. After all, if the idea is to draw a connection between the brand owner and the brand, using your own name cuts out the middleperson. While using your name as a brand may be beneficial, and maybe even profitable, when push comes to shove, there may be a time when you want to part ways with your brand. If you took this route, separating the personal use of your name from its commercial use will prove difficult. That’s what happened with Ms. Kate Spade.
With the unfortunate passing of Kate Spade in early June 2018, consumers and commentators speculated how the Kate Spade brand was going to continue without her. What these individuals failed to appreciate was that Ms. Spade hadn’t been working at the Kate Spade brand since 2007, when she sold her brand and intellectual property to Liz Claiborne. As part of the terms of the sale, Ms. Spade assigned all rights to use the Kate Spade name as a trademark, and she could only use the Kate Spade name to identify herself personally. This meant that all of her efforts in cultivating an immensely successful brand ended with Ms. Spade forfeiting the right to use her name in any commercial manner. If Ms. Spade started designing and selling handbags, she couldn’t sell them under her own name. When Ms. Spade started designing accessories again in 2014, she was forced to get creative – she legally changed her surname to Valentine and started offering products under the brand “Frances Valentine,” a combination of her daughter’s name and her new last name.
All in all, while Ms. Spade hadn’t been at the Kate Spade brand for over ten years, the public still associated the woman Kate Spade with the brand Kate Spade. When brainstorming for your new, edgy, or inventive brand name, take a lesson from one of the greatest designers and marketing minds this century has seen – be aware of the potential risks and complications of taking the easy way out; when you are no longer with the company, the company will still be with the name and you may be forever restricted from using your own name commercially again.
About the Author:
Lian Osier is an associate with Innis Law Group who focuses her practice on intellectual property law. She particularly focuses on prosecution, protection, and enforcement actions for trademark and domain name portfolios.
Lian independently manages all aspects of the trademark prosecution and counseling process for numerous clients with global trademark portfolios. She has constructed and executed comprehensive global trademark strategies, including representing clients in enforcement matters around the world, before the U.S. Trademark Trial and Appeal Board, and in federal district courts.
Lian has been particularly involved in handling matters for clients in the agricultural and food industries. She regularly works with high-profile clients, including representatives for a Fortune 50 company, small businesses, and individuals.