The risks of using your own name as a brand.

About a year after Thaddeus O'Neil launched a men's clothing line inspired by the surf culture typical of the Eastern Long Island area where he grew up, the independent designer received a cease-and-desist letter from a law firm representing Sisco Textiles, the owner of the famous sportswear brand "O’Neill."

This marked the beginning of the legal dispute between the surfwear brand O’Neil, founded in 1952, and the New York-based designer who is gaining increasing popularity after winning several fashion competitions.

In its dispute with the New York-based fashion designer, O'Neill claims that its brand has been using this name since the 1950s and that Thaddeus O'Neil's trademarks are "confusingly similar." According to O'Neill, this could mislead consumers and lead them to believe that the companies are affiliated.

Trademark disputes involving patronymic trademarks (i.e., where the trademark is equivalent to the founder’s name) are fairly common in the fashion industry. In 2012, Tod’s—which, at the time, was using the “Roger Vivier” trademark under a licensing agreement—sued Los Angeles-based handbag designer Clare Vivier for trademark infringement. Ultimately, Clare Vivier rebranded her label as “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 had founded.

But what is the position of Italian courts when the use of patronymics could cause confusion with other trademarks? In the late 1980s, the Court of Cassation ruled that the use of a patronymic as a trademark is legitimate, even if it conflicts with a previously registered trademark, as long as the earlier trademark does not become a well-known trademark.

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

Our advice? Do some preliminary research on existing trademarks before launching a brand under your own name.