When is a trademark primarily merely a surname?

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 for a surname trademark?

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.

What does “merely a surname” mean?

“Merely a surname” means that the trademark does not contain any other distinctive terms. So one way to avoid or minimize a surname refusal would be to add more distinctive terms to the mark. Titles such as Mr. or Mrs. or Dr. would likely be insufficient. A first name might help. Adding generic words also would not help. Think of more unique terms that can be combined with the last name.

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.

Another potentially effective strategy may be to argue that the mark includes more than a surname. For example, a mark that contains at least two initials in addition to the last name might be able to overcome a surname refusal.

Option for registering surname trademarks 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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