Written by: Susan Neuberger Weller
Right on the heels of our surname blog comes a New York Times article on a long-running trademark litigation over rights to the Borghese surname. The Borgheses hail from an Italian noble family and their using the family history for marketing purposes is what prompted a lawsuit which goes to trial this summer in New York. The case, Borghese Trademarks Inc. et al. v. Borghese et al., 1:10-cv-05552 (SDNY), was brought by the cosmetics company originally founded by Princess Marcella Borghese and Revlon in the 1950s. In 1976, Revlon bought the Borghese cosmetics brand and in 1992 sold it to Georgette Mosbacher who became the CEO. The Defendants include Princess Marcella’s son Francesco Borghese, his wife Amanda, and his two sons Scipione and Lorenzo. The Borghese family has its own cosmetics line which it does not sell under the Borghese surname but in connection with which it has been touting the family history, which obviously requires use of the family name. The owner of the rights to the BORGHESE trademark claim that the use of the family name by the family in connection with its own cosmetics company will create the false impression that there is a connection or relationship between Borghese Trademarks Inc. and its products and the family’s cosmetics line. False impressions of an association, endorsement, affiliation, sponsorship, relationship, and the like of the type alleged are not permitted under trademark law.
The take away from this saga is that even a well-known, Italian noble family with a long lineage including rulers, philosophers and a pope doesn’t have an absolute right to use its family name as a trademark or, perhaps, for general marketing purposes. Thus, before you seriously consider using your family surname or someone else’s family surname as a trademark or company name, think again. You probably can do better than that.