Potential Barriers to Filing a Surname as a Trademark

Under US federal trademark law, it is nearly impossible to obtain a trademark registration from the United States Patent and Trademark Office (USPTO) for a mark that would be considered “primarily simply a surname.” Registration under such a category tends to be rejected unless the applicant can prove that the name has a meaning other than a surname.

When using a surname for a trademark application, you should keep in mind that the primary meaning of a trademark to consumers determines whether it is primarily a surname and is not determined by the subjectivity of the examiner. Applicants must demonstrate to the USPTO that consumers in the marketplace view the applied-for mark as a reference to the company or brand rather than a last name. Under Section 2(e)(4) of the Trademark Act, a trademark that is of primary importance, a surname, is considered unregistrable in the USPTO Principal Registry without displaying acquired distinctiveness.

However, it is perfectly possible to register a surname as a trademark if there is evidence of prolonged and exclusive use that changes the meaning of a surname to that of a specific good or service. When that happens, consumers no longer identify the trademark applied for with a last name but with particular goods or services.

HOW TO OVERCOME A DENIAL OF SURNAME?

When requesting a trademark, applicants should remember that many share the same or similar last names. The purpose of rejecting a primary surname application is for examiners to keep shared names available to other applicants who may have an interest in using their surname as part of their business identity.

Sometimes even experienced USPTO examiners have a hard time determining if an applied-for mark is a last name, since the answer is not always obvious. Refusals are commonly issued to applicants whose marks did not display recognized meanings other than a surname. To avoid receiving office action based on last name, the following questions should be considered before choosing your trademark.

Is the last name commonly used? The more popular a surname is, the more likely it is to be perceived as a surname.

Is the proposed trademark the last name of the applicant or of someone related to the applicant? If the answer is yes, it is more likely to be considered as a last name.

Does the proposed brand have any alternate meanings besides a last name? If the mark has other recognized meanings, it is presumably not a surname.

Does the proposed brand have the structure or pronunciation of a surname? A brand that looks or sounds different from a surname is not primarily perceived as a surname.

Is the proposed mark stylized enough to be distinguished from that of a surname? Adding distinctive design elements or stylization can turn a surname trademark into primarily not a surname.

These guiding questions are excellent in terms of their simplicity and ability to help avoid potential last name rejections. However, they are not absolute. Each brand case is affected by a combination of factors that shape the overall analysis. There is no set formula to avoid being denied a last name, but there are ways to get around it when you receive one.

Applicants who hold more than one registration of the same mark on the same or related goods or services can potentially overcome an Office Action by doing the following:

Submit domain claim of records of previous surnames in the Main Registry; Prayed

Provide a signed statement or affidavit affirming the distinctiveness of the mark through substantially continuous use in commerce for at least five years to the USPTO.

Applicants may also submit evidence of acquired distinctiveness in support of the surname application. Evidence may include:

Brand promotional materials;

Marketing expenses spent on those promotions;

Testimonials from partner companies and customers; Y

Any evidence that recognizes the mark as an identifier of origin for specific goods and services.

Denial of surname is not uncommon and applicants should be aware that any mark that is understood solely as a surname may be subject to official action if it has no other recognized meanings. Therefore, it is in the best interest of the owner to be ready to show that the mark has acquired a non-surname meaning as part of the evidence to overcome a denial of surname in the future.

Disclaimer: This website is not intended to provide legal advice or to be a substitute for a case-by-case consultation with an attorney. The information provided above is for informational purposes only and may be subject to change.