William Shakespeare’s character Juliet famously asked Romeo “What’s in a name?” The question still rings true today, and the answer may be, well, a lot.
The Power of a Name
The value in Grammy-award winning singer Rihanna’s name, her surname specifically, is at the center of a legal dispute between her and her father.
Robyn Rihanna Fenty, known worldwide as Rihanna, sued her father, Ronald Fenty (“Mr. Fenty”) alleging he used their surname, Fenty, to mislead consumers into thinking she was associated with his business, Fenty Entertainment LLC. Rihanna filed suit in the U.S. District Court for the Central District of California against Mr. Fenty and his business partner, Moses Joktan Perkins, claiming a violation her right of publicity, false designation of origin, and false light, among other claims. She is seeking damages, an injunction to stop her father from using her “FENTY” trademark to sell or promote any goods or services, and a declaratory judgment.
Known worldwide as a pop music star and beauty icon, Rihanna is also a prosperous businesswoman. According to the complaint, she has been using her surname professionally and in connection with her brand and business ventures since at least August 2012. Through her company, Roraj Trade, LLC, she owns U.S. trademark registrations for a series of marks containing her surname, including “FENTY BEAUTY”, “FENTY BEAUTY BY RIHANNA”, and “FENTY GLOW”. She also owns trademark registrations in multiple foreign jurisdictions for the marks: “FENTY BEAUTY”, “FENTY BY RIHANNA”, FENTY”, and “FENTY FRAGRANCE”. Rihanna’s trademarks cover a number of products, including makeup, fragrances, and sneakers. “FENTY BEAUTY” has become one of Rihanna’s most popular brands, standing out at the forefront of popular cosmetics retailer Sephora, and being named one of Time Magazine’s 2017 “Inventions of the Year.
In 2017, Mr. Fenty opened Fenty Entertainment LLC, described on its website as an entertainment company “cultivating new talent and developing TV and media platforms.” His company is registered as an LLC in California and is also described as a production company developing “motion pictures, live concerts, and record producing.” In sum, Mr. Fenty’s business brands itself as offering services in the entertainment industry – the same industry in which his daughter has become of the biggest stars. With Rihanna’s visible brand campaigns, such as “Fenty Beauty”, “Fenty x Savage”, “Fenty x Puma” – and now her father’s Fenty Entertainment LLC…use of the Fenty name seems to leave room for confusion.
Supporters of Mr. Fenty’s business might respond: “Well, it’s his last name, too.” But what rights does a party have to their own last name?
Can A Surname Be Trademarked?
It depends. U.S. federal trademark law doesn’t allow an applicant to register a surname that is “primarily merely a surname” on the Principal Register. 15 U.S.C. §1052(e)(4). This means there is no protection on the Principal Register for a surname that generally has no meaning outside of being someone’s last name.
On the other hand, if a surname has secondary meaning, also known as “acquired distinctiveness,” it’s eligible for protection under federal trademark law. A trademark registration applicant must prove that consumers associate the surname with a brand rather than simply thinking of it as someone’s last name. A quick example is fast-food chain McDonald’s. While “McDonald” is a surname, McDonald’s Corporation owns the registered mark “McDONALD’s” in connection with restaurant services because the word “McDonald’s” has acquired a secondary meaning as a fast food restaurant with the golden arches.
Similarly, in Rihanna’s complaint, she argues that the “FENTY” mark, is “inextricably intertwined” with her professional persona, reputation, and businesses. She argued that her “FENTY” mark has secondary meaning because relevant consumers understand the association with Rihanna when they see the mark “FENTY”.
It’s important to note that Rihanna owns the “FENTY” trademark in connection with beauty, makeup, and fashion products. However, her complaint does not raise a trademark infringement claim, perhaps because Mr. Fenty filed a trademark application to register “FENTY” in connection with resort hotel services, not beauty products. His trademark application is still under review by the U.S. Patent and Trademark Office, which issued an initial refusal to register “FENTY”, alleging that it is primarily merely a surname when viewed in connection with hotel resort services (and citing 677 public records of individuals with the surname Fenty on the LEXISNEXIS® surname database).
Rihanna’s complaint brought claims of false designation of origin, suing her father for allegedly using their last name (her trademark) in his business to mislead consumers to think she is associated with his company. Rihanna argues that the strong recognition of her “FENTY” trademark combined with her father’s choice to name his business Fenty Entertainment, and Rihanna’s overall influence in the entertainment industry confuses consumers into thinking Fenty Entertainment is associated with Rihanna, Roraj, and her Fenty Beauty product line.
The complaint also raises principles of agency law – it alleges that Mr. Fenty misrepresented the company as having authority to submit offers and enter into contracts on behalf of Rihanna. One notable allegation is that Fenty Entertainment engaged in conduct to book Rihanna for a series of Latin American concerts.
The complaint further alleges that until just about four months ago – October 2018, a press release on Fenty Entertainment’s website read “Ronald Fenty, father of superstar recording artist Rihanna, today announced the launch of Fenty Entertainment with his daughter Robyn ‘Rihanna’ Fenty”, implying an allegedly false affiliation with Rihanna. According to the complaint, Fenty’s social media accounts stated that the company was affiliated with Rihanna until as recently as November 2018.
The complaint claims that while Mr. Fenty is Rihanna’s father, “he does not, and has never had, authority to act on Rihanna’s behalf.”
Even though Rihanna is a superstar entertainer, her “FENTY” trademarks largely protect her services in beauty, fashion, and fragrances. What does this mean for her father’s business as it relates to the entertainment industry?
The U.S. District Court for the Central District of California will decide.