Taking a line from William Shakespeare, this post will analyze what rights celebrities have in their own names.  Recently, we have heard of two cases of celebrities fighting against trademarks that bear their name: LA Triumph v. Madonna and Material Girl Brand; and Stefani Germanotta (Lady Gaga) v. Excite Worldwide LLC.

In the Madonna suit, fashion company LA Triumph is suing Madonna for rights to its registered trademark “Material Girl.”  LA Triumph gained rights to this name when it registered for the mark in 1997.  However, Madonna who is launching a fashion line with Macy’s under the same name is claiming that her rights to the name preceded LA Triumph’s because she sang and performed the song that made the phrase famous back in the 80s.  This case will be going to trial this month in the U.S. District Court, Central District of California.

Lady Gaga’s suit against Excite is filed under the same notion, but with a different set of circumstances.  Excite is a Las Vegas cosmetics company that wants to register the name “Lady Gaga” and “Lady Gaga LG” for its products.  Even though the U.S. Patent and Trademark Office has not approved Excite’s application, Lady Gaga is filing suit to prevent approval.  Lady Gaga claims that this name is hers and Excite is attempting to steal her likeness to promote its own products.

The Lanham Act, which governs trademark law, provides protection for marks that create an association between a good or service and its source.  This means that when consumers see “Burberry,” they understand that the good is manufactured by Burberry; this is also true when consumers see “Reetone,” they understand that this product is one made by “Reebok.”  However, where the two celebrity suits described above tread into murky water is when you ask:  Are these names really trademarks in the sense that Burberry and Reetone are?

To answer the questions above, we have to think: What good or service are the names “Material Girl” or “Lady Gaga” associated with?  The name “Material Girl” is tough.  Sure, when you think of it, you automatically think of Madonna, but what good or service does it sell?  You could argue that Madonna’s alter-ego is “Material Girl,” much like how Stefani Germanotta is Lady Gaga, but it’s a difficult argument to sell especially since that song was released in the 1980s and for the last couple decades, Madonna hasn’t really been promoting herself as being the material girl she once was.  Lady Gaga may have it easier here though.  This name would be considered as fanciful and arbitrary by the Patent and Trademark Office, much like how Xerox is a random word that has now become synonymous with copy machines.  Along with the distinctive nature of the name and how there’s a good argument that “Lady Gaga” is associated with her music, which is a type of good or service,  it could be a good case to prevent Excite from gaining rights to it.

Well, stay tuned: Things are very exciting in trademarks and we’ll be following both cases closely.