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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 last name.” 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 be aware that the primary meaning of a mark 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 prime importance, a surname, is considered unregistrable on the USPTO Master Register 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 surname but with particular goods or services.
HOW TO OVERCOME A SURNAME DENIAL?
When requesting a Commercial brand, 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 surnames as part of their business identity.
Sometimes even experienced USPTO examiners have a hard time determining if a trademark applied for is a surname, as 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 an office action based on last name, the following questions should be considered before choosing your trademark.
Is the surname commonly used? The more popular a surname is, the more likely it is to be perceived as a surname.
Is the proposed trademark the surname of the applicant or of someone related to the applicant? If the answer is yes, it is more likely to be considered as a surname.
Does the proposed mark have any alternative meaning besides a surname? If the mark has other recognized meanings, it is presumably not a surname.
Does the proposed mark have the structure or pronunciation of a surname? A brand that looks or sounds different from a family name is not primarily perceived as a family name.
Is the proposed mark stylized enough to be distinguished from that of a surname? Adding distinctive design elements or styling can turn a surname trademark into primarily not a surname.
These guide 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 a surname denial, but there are ways to overcome it when you receive one.
Applicants who hold more than one registration for 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 previous surname records in the Main Registry; Prayed
Provide a signed statement or affidavit affirming the mark’s distinctiveness 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 dedicated to those promotions;
Testimonials from associated companies and clients; Y
Any evidence that recognizes the mark as an identifier of origin for specific products and services.
Surname refusal is not uncommon and applicants should be aware that any mark 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 surname denial 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.