Under the US federal trademark law, it is almost impossible to get a trademark registration from the United States Patent and Trademark Office (USPTO) on a mark that would be considered “primarily merely a surname”. Registration under such category tends to face refusal unless the applicant can prove that the name has another significance other than that of a surname.
When a surname is used for a trademark application, you need to consider that the principal meaning of a trademark to consumers determines whether it is primarily a surname and is not to be determined by the examiner’s subjectivity. 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 surname., Under Section 2(e)(4) of the Trademark Act, a trademark that is of first importance, a surname, is deemed unregisterable on the Principal Registry of the USPTO without showing an acquired distinctiveness.
However, it is entirely possible to trademark a surname if evidence of long and exclusive use that changes the significance of a surname to that of a specific good or service. When that happens, consumers no longer identify the applied-for mark with a surname but with particular goods or services.
HOW TO OVERCOME A SURNAME REFUSAL?
When applying for a trademark, applicants should remember that many share the same or similar last names. The purpose behind refusing a primarily merely surname application is for the examiners to keep the shared names available for other applicants who may have an interest in using their surnames as part of their business identity.
At times, even experienced examiners at the USPTO struggle with determining whether an applied-for mark is a surname as the answer is not always obvious. Refusals are commonly issued to applicants whose marks failed to show other recognized meanings other than a surname. To avoid receiving a surname-based office action, the following questions must be considered before choosing your trademark.
Is the surname commonly used? The more popular a surname is, a higher likelihood for it to be perceived as a surname.
Is the proposed mark the surname of the applicant or of anyone connected with 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 other than 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 mark that looks or sounds different from a surname is not perceived as primarily a surname.
Is the proposed mark stylized enough to distinct itself 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 great in terms of their simplicity and ability to help avoid potential surname refusals. Nevertheless, they are not absolute. Each trademark case is affected by a combination of factors that shape the overall analysis. There is no set formula to avoid a surname refusal, but there are ways to overcome it when you receive one.
Applicants who own more than one registration of the same mark in the same or related goods or services can potentially overcome an Office Action by doing the following:
Submit a claim of ownership of prior surname registrations on the Principal Register; or
Supply a signed declaration or an affidavit which affirms the mark’s distinctiveness through its substantially continuous use in commerce for at least five years to the USPTO.
Applicants could also present evidence of acquired distinctiveness in support of the surname application. Evidence may include:
Promotional materials for the trademark;
Marketing spending devoted to those promotions;
Testimonials from partnering companies and customers; and
Any evidence that recognizes the mark as a source identifier for specific goods and services.