The risks of using your own name as a brand.

About a year after Thaddeus O'Neil launched a menswear line inspired by the surf culture of the Eastern Long Island area where he grew up, the independent designer has received a cease and desist letter from a Law Firm representing Sisco Textiles, owner of the famous sportswear brand "O'Neill".

This was the beginning of the legal dispute between the surfwear brand O'Neil, founded in 1952, and the New York designer who was gaining popularity after winning several fashion competitions.

In their dispute with the New York fashion designer, O'Neill's company claims that his brand has been using the name since the 1950s and that Thaddeus O'Neil's trademarks are "confusingly similar." O'Neill argues that this could mislead consumers into thinking the companies are related.

Trademark disputes involving patronymics (i.e., where the trademark is equivalent to the founder's name) are quite common in fashion. In 2012, Tod's—which at the time was using the "Roger Vivier" trademark under a licensing agreement—sued Los Angeles handbag designer Clare Vivier for trademark infringement. Vivier ultimately renamed her brand "Claire V." In 2016, in Italy, Elio Fiorucci lost a lawsuit involving the use of the "Love Therapy by Elio Fiorucci" trademark against the new owners of the brand he founded.

But what is the position of Italian courts when the use of surname names could lead to confusion with other trademarks? In the late 1980s, the Court of Cassation held that the use of a surname as a trademark is legitimate, even if it conflicts with a previously registered trademark, as long as the previous trademark does not become famous.

This principle was reaffirmed by the Supreme Court in 2016 in the aforementioned case Fiorucci vs. Elio Fiorucci.

Our advice? Perform preliminary trademark research before launching a brand under your own name.