The Estée Lauder Companies recently filed legal action in the United Kingdom against British perfumer Jo Malone, her fragrance brand Jo Loves, and the UK branch of fast fashion retailer Zara. At the center of the dispute is the use of the name “Jo Malone” on certain fragrance products. Estée Lauder alleges that the use violates contractual and trademark rights that the company obtained when it acquired the Jo Malone brand in 1999.

This dispute underscores a recurring tension in the beauty and fashion industries. Many successful brands are built around a founder’s personal identity. A personal name can signal authenticity and craftsmanship while creating a powerful narrative that resonates with consumers. But once that name functions as a trademark and becomes part of a commercial transaction, it may transform from a personal identifier into a corporate asset.

Such a shift often means the founder who built the brand around their own name may later face legal limits on using that name in the same industry.

Jo Malone’s situation is not unique. Beauty entrepreneur Bobbi Brown sold her namesake cosmetics brand to Estée Lauder in 1995 and remained with the company for more than two decades. After leaving, she was subject to a non-compete that temporarily prevented her from launching another beauty brand. When she later returned to the market, she could not use the name Bobbi Brown because the trademark remained owned by the company. Her new venture instead launched under the name Jones Road.

These examples illustrate a structural feature of trademark law and brand transactions. A personal name may begin as an individual’s identity, but once it functions as a source identifier in commerce and is transferred through a corporate transaction, it becomes intellectual property like any other brand asset.

For founders considering building a brand around their own name, several trademark issues deserve attention early in the process.

1. The trademark owner of your name may not be you

Founders often assume that using their personal name as a brand means they personally control the trademark. In practice, that is rarely the case.

Most companies structure intellectual property ownership so that trademarks and other core assets belong to the corporate entity rather than the individual founder. Investors, partners, and potential acquirers typically expect the company itself to own its brand assets.

As a result, even if a mark consists of the founder’s personal name, the legal owner of the trademark is often the business entity. If the company is later sold or the founder exits, the trademark generally transfers with the owner entity. The founder may then face restrictions on using their own name for related goods or services without risking trademark infringement or breach of contractual obligations.

U.S. trademark law also imposes a specific requirement when a mark includes the name of a living individual. Under Section 2(c) of the Lanham Act, a trademark cannot be registered if it consists of or comprises the name, portrait, or signature of a particular living person without that individual’s written consent.

During the application process, the United States Patent and Trademark Office requires applicants to confirm whether the mark identifies a living individual. This rule applies broadly and may include legal names, nicknames, stage names, and pseudonyms.

If the mark identifies a living person, the application must include a signed consent statement authorizing registration. Although the requirement is usually straightforward to address, overlooking it can create unnecessary delays and additional prosecution costs.

For founder brands, the consent requirement often intersects with broader questions of trademark ownership. A founder may authorize a company to register a mark containing their name, but the company’s ownership structure and contractual arrangements ultimately determine who controls the trademark.

3. Exit planning matters when your name is the brand

The Jo Malone dispute highlights the importance of considering the long-term implications of using a personal name as a brand.

In the early stages of building a brand, it may be difficult for founders to focus on seemly distant concerns such as trademark ownership and exit strategies. Yet these issues frequently become significant when a company is sold or when a founder decides to pursue a new venture.

Acquisition agreements, intellectual property assignment provisions, and non-compete clauses often define what rights a founder retains in their name after leaving the company. In some transactions, founders negotiate limited rights to use their name in unrelated industries. In others, the restrictions are broader and may prevent the founder from using their name for similar products or services.These provisions are often negotiated as part of larger deal terms and can have lasting consequences for a founder’s professional identity and future business opportunities.

The Takeaway

Building a brand around a personal name is a powerful strategy. It can signal authenticity and create a strong connection with consumers. At the same time, it also means a person’s identity becomes part of a commercial asset that may ultimately be controlled by a company owned by others.

For founders whose personal identity becomes their brand, thoughtful trademark planning early on can make a meaningful difference years later. 

If you are evaluating how to protect your name, brand identity, or trademark rights, Judy Yen can help you assess your position and develop a thoughtful protection strategy. Contact her at judyyen@omnuslaw.com.