The first legal article I wrote after law school was published in the July/August 1996 edition of the SC Lawyer (it's so old I can’t even find it online). The article entitled, “My Name, My Heritage, My Trademark Infringement Suit,” discusses how the use of one's family name in business has long been considered a fundamental right, but modern trademark law has significantly curtailed this practice. The evolution of trademark protection has led to situations where individuals may be legally barred from using their own last names commercially if it infringes on established trademark rights.

A recent Google alert concerning the Walgreen Co. v. Walgreen Health Solutions, LLC case jolted me back in time to that article and provides a recent and relevant example of how trademark law can restrict an individual's ability to use their own last name, or surname, in business. This case illustrates the modern approach to surname-based trademark disputes highlighting the factors courts consider when balancing trademark rights against an individual's desire to use their family name commercially.

In this case, Walgreen Co. sued Walgreen Health Solutions, LLC (WHS) and Charles R. Walgreen for trademark infringement, trademark dilution, false representation or false designation of origin, and unfair competition. The dispute centered around WHS's use of the "Walgreen" surname in its business name and branding. In ruling upon a motion to dismiss, the court recognized that Walgreen Co. had sufficiently and plausibly alleged use of its WALGREENS® mark for more than a century, developing substantial goodwill and reputation in the healthcare industry. This long-standing use contributed to the mark's strength, distinctiveness, and secondary meaning. The court also found that WHS's marks were alleged to be highly similar to Walgreen Co.'s established WALGREENS® mark and used for related services.

The Walgreen case demonstrates that even when an individual has a legitimate claim to a surname, they could be restricted from using it commercially if it infringes on an established trademark. This aligns with the modern approach to the personal name rule, which prioritizes consumer protection and prevention of marketplace confusion over an individual's unrestricted right to use their surname in business.

Historically, courts upheld an individual's right to use their name in business, even if it conflicted with existing trademarks. This principle, known as the "personal name rule," was exemplified in early cases like Hilton v. Hilton (1918), where the court declared that using one's name in business was an "inalienable right." However, this absolute right has eroded as courts recognize the need to protect consumers from confusion and prevent unfair competition.

Today, when evaluating surname-based trademark disputes, the main factors courts will examine are:

1.    Secondary Meaning: Has the surname acquired a distinctive association with a particular business or product in the public mind?
2.    Likelihood of Confusion: Would the use of the surname by another party likely confuse consumers about the source of goods or services?

For entrepreneurs and business owners, the Walgreen case serves as a cautionary tale, highlighting the importance of conducting thorough trademark searches and carefully considering potential conflicts before adopting a surname-based brand.