Before her unexpected death earlier this year, designer Kate Spade (or should I say formerly known as Kate Spade) presented a very interesting case study for naming a business after yourself.
Did you noticed I said “formerly”? Yes, at the time of her death, her professional name was actually Kate Valentine. You might ask…after all that fame, why was she going by Kate Valentine?
As many of you know, Kate Spade and her husband built a fashion accessory empire beginning in the early 1990s. I mean who didn’t want one of those snappy little bags? Then, Kate Spade (the person) sold her shares in Kate Spade (the company) in 2007. At the time, she and her husband wanted to focus on other endeavors that were important to them.
But when Kate sold her company Kate Spade, she also sold the trademark rights to her name. That means she cannot—I repeat CANNOT—use that name for commercial gain. Trademark rights hinge on use in commerce. As long as Kate Spade the brand maintains and uses that name, Kate the designer cannot use it commercially.
So when Kate wanted to start a new brand called Frances Valentine in 2016, she couldn’t use her name, Kate Spade to promote it. So what’s an internationally-famous designer to do? She changed her professional name to Kate Valentine in order to differentiate the old brand (Kate Spade) with the new brand (Frances Valentine). She also employed a marketing campaign, “Where is Kate?”, aimed at explaining in a whimsical and tongue-in-cheek way why Kate began a new line without using her name.
This situation is so very fascinating from a legal standpoint. Kate built Kate into a brand. Kate sold Kate, and Kate started a new non-Kate brand. But then Kate had to figure out a way to use Kate without using Kate to promote non-Kate. Got it?? LOL!
Why? The legal standard for infringement in trademark cases is will the use cause likelihood of confusion to the consumer. If Kate uses her former legal name Kate Spade to promote Frances Valentine, her new brand, it is conceivable that consumers could be or would be confused. They might think they were buying Kate Spade, the brand, when in fact, they are buying Frances Valentine.
So what’s in a name? A lot more than you may think. So when choosing a name for a brand, choose wisely.