Van Praagh v. Gratton

Although personal names used as trademarks are generally regarded as descriptive terms, the court found that they are protected if, through usage, they acquire distinctiveness and a secondary meaning. Because a name was found to be protected, the onus was on the second person trying to use it to avoid mistake.

Opinion (Spatt): James Van Praagh (“Plaintiff”) commenced a trademark infringement action against his sister, Lynn Gratton (“Defendant”). Plaintiff and Defendant used to have the same surname, but after Defendant was married, she assumed her spouse's surname. For twenty years, Plaintiff used his name “James Van Praagh” in conjunction with spiritual medium services. Plaintiff claimed that he has developed an enormous following and is one of the most recognized spiritual mediums in the world, and that he has built valuable good will in his name. In 2010, Defendant began providing her own spiritual medium services using the surname “Van Praagh.” In 2012, Plaintiff filed for a trademark with the United States Patent and Trademark Office. Plaintiff argued that he had a valid trademark not only after filing, but prior and claimed that his unregistered trademark existed for his surname alone. Personal names used as trademarks are generally regarded as descriptive terms and are thus protected only if, through usage, they have acquired distinctiveness and secondary meaning. Once an individual’s name has acquired a secondary meaning in the marketplace, a later competitor who seeks to use the name or similar name must take reasonable precautions to prevent the mistake. Determining what constitutes reasonable precautions or limitations entails a fact-intensive analysis that must be made with balance. Looking to the alleged facts, the court determined that Plaintiff’s surname had acquired a secondary meaning based on his services as a medium. Accordingly, Defendant’s motion to dismiss was DENIED.