By: Jamielah Yancey
Just days after Robyn “Rihanna” Fenty launched her new cosmetic line, Fenty Beauty, a Delaware corporation submitted a trademark application for Fenty Estates Wine and Spirits Company. Rumors quickly surfaced about the possibility of Rihanna Fenty venturing into the cosmetic industry and wine industry simultaneously. While this new endeavor may have initially left Rihanna fans excited, they were likely alarmed to find that Rihanna Fenty, herself, actually has no intention of venturing into the wine and spirits market at the time.
Nonetheless, on September 11, the United States Patent and Trademark Office (USPTO) sent an office action to the Delaware Corporation under Trademark Act Section 2(e)(4)—refusal for use of a surname. This means that the corporation’s trademark application was refused because the mark, Fenty Estates Wine and Spirits, is primarily merely a surname. The USPTO determines whether a mark is primarily merely a surname by considering the central significance of the mark as a whole to the purchasing public.
The USPTO office uses several inquires to determine the public’s perception of a term’s primary significance. These inquiries include: (1) whether the surname is rare; (2) whether anyone connected with applicant uses the term as a surname; (3) whether the term has any recognized meaning other than as a surname; (4) whether the term has the structure and pronunciation of a surname; and (5) whether the term is sufficiently stylized to remove its primary significance from that of a surname.
Notwithstanding the coincidence that the Fenty Estates’ registration application was filed just one month before the highly anticipated launch of Fenty Beauty cosmetic line, the Delaware Corporation can only obtain registration on the Principal register if they are able to rebut the Section 2(e)(4) refusal. The Delaware Corporation may attempt to establish that the surname has acquired secondary meaning, or join the surname with an additional distinctive term in order to be registrable. Additionally, the corporation might attempt to rebut by establishing that the surname, Fenty, is rare and that they are directly connected to the surname, entitling them to register it in association with their product. That is, unless the attempted registration of the Fenty Estates trademark is simply a marketing ploy to deceptively attract consumers who support the pop star, business mogul, and entrepreneur, Rihanna, as she promotes diversity and inclusion around the world.