What is a surname trademark?
If you are attempting to register a mark that constitutes a surname, there is a good chance your trademark application may be refused for being primarily merely a surname [see TMEP Section 1211]. In such cases, it might be possible to register the mark depending upon a number of 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:
- whether the surname is rare;
- whether the mark is the surname of anyone connected with the applicant;
- whether the mark has any alternative meanings other than as a surname (i.e., non-surname significance);
- whether the mark has the structure and pronunciation of a surname;
- 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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