What is a surname trademark?

If you are attempting to register a mark that constitutes or includes a surname, there is a significant risk that your trademark application may be rejected for being primarily merely a surname. It might still be possible to register the mark depending upon certain factors.

What does “primarily” mean?

A refusal to register a trademark must be based on something more than the fact that the mark is a surname. The keyword here is “primarily” – i.e., whether the primary and only significance of the term is that it constitutes a last name.

The TTAB has identified the following factors in determining whether a mark is primarily merely a surname [see TMEP Section 1211]:

  1. whether the surname is rare;
  2. whether the mark is the surname of anyone connected with the applicant;
  3. whether the mark has any alternative meanings other than as a surname (i.e., non-surname significance);
  4. whether the mark has the structure and pronunciation of a surname;
  5. whether the stylization of lettering is distinctive enough to create a separate commercial impression.

How to argue against surname refusal

An applicant can respond to a surname refusal by submitting arguments as to why the mark is not primarily merely a surname. Here are some examples of marks that were ultimately determined not to be primarily merely surnames:

One of the more successful arguments against a surname refusal has been to show the rarity of the term being a surname. This argument makes sense in the marketplace where consumers would not readily recognize a mark as being a surname.

Option for registering on the Supplemental Register

In certain cases, the examining attorney may give an applicant the option of switching to the Supplemental Register. For an Intent-To-Use application, however, the applicant must first file evidence of usage of the mark before amending the application for the Supplemental Register.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.