Surname Refusal

From a trademark perspective, nothing serves as a stronger identifier than an individual’s personal name.  But does this make personal names appropriate for trademark registration?  Trademark law has always treated personal names differently.  In the past, a person was free to use his or her name as a trademark and was not obligated to defend against a claim of trademark infringement by another person with the same name.  More recently, however, trademark law has evolved to allow personal names to be protected as trademarks, but only in certain in certain circumstances. Therefore, there is no absolute right that you may be able to trademark your personal name (e.g., surname or family name), but it is possible to do so in certain situations.  The following discusses personal names and surnames as trademarks, and ways to avoid United States Patent & Trademark Office (USPTO) Section 2(e)(4) surname refusals (“primarily merely a surname”).

Can I Trademark My Personal Name?

The Lanham Act bars federal trademark registration without secondary meaning only to marks that are “primarily merely a surname.”  Under common law, a showing of secondary meaning is required for both surnames and first names (as well as a combination of both) under the general definition of “personal names.”  For example, the USPTO examining attorney may allow the federal registration of the first name and surname “Al Merrick” for surfboards and surf related products without proof of acquired distinctiveness (secondary meaning).  However, the USPTO examining attorney may not allow the federal registration of the surname “Merrick” alone without a showing of acquired distinctiveness (secondary meaning).

There are four bars to federal trademark registration that may apply to surnames.  First, a trademark applicant may not register a trademark that is “primarily merely a surname” unless the surname has acquired distinctiveness, or secondary meaning.  Second, when an applied-for trademark comprises the name of a living person, that living person much explicitly consent to registration or the USPTO will issue an office action refusing to register the personal name.  Third, a trademark applicant may not register a trademark that falsely suggests a connection with a person that is living or dead.  Fourth, a trademark applicant may not register a trademark that disparages a person that is living or dead.

When selecting a trademark to identify the source of your particular goods and/or services, you need to select a trademark that is capable of distinguishing your goods and/or services from those of others. It may seem intuitive that a personal name would serve that purpose perfectly. In fact, many celebrities, athletes and musicians have successfully registered their personal names as trademarks for a variety of goods and services. However, there are challenges to effectively protecting one’s personal name as a trademark.

If a mark consists of a first name alone, first and last name together, or a last name combined with two initials, then the name can (depending on the circumstances) overcome the “primarily merely a surname” preclusion.  The other requirements for a valid trademark, however, still must be satisfied for the trademark to proceed to registration. For example, not only must the personal name act as a source identifier but it cannot cause a likelihood of confusion with another pending application or registered mark. If a personal name causes a likelihood of confusion with another trademark that is pending or registered, the trademark application may be suspended or refused.

If trademarking the name of a living individual, including first names, surnames, pseudonyms, stage names, nicknames, or titles that the relevant public would perceive as identifying a particular individual, then the individual must consent to the use of their name. This consent must be included in the trademark application.

Primarily Merely A Surname Trademark Refusal – Section 2(e)(4) “Surname” Refusal

Can I Trademark My Surname?

In order to prove that a surname is a valid trademark, its owner must provide that consumers have come to understand the personal name to identify a particular businesses product and/or service.  For example, a consumer seeing the HURLEY brand for the first time might simply have thought that someone with the surname Hurley was associated with the clothing line – and they would be right (Bob Hurley is the original founder of this clothing company).  Today, HURLEY has gained an extraordinary amount of acquired distinctiveness (secondary meaning) and is certainly a registrable, protectable trademark.  The term’s primary meaning is as a surname,  conveying simply that the business is associated with a person, but its secondary meaning is as a trademark, conveying an association with a particular source (or brand) of clothing products.  Consumers have come to see the HURLEY name as signifying a business that produces clothing, or surf-wear, rather than a person’s surname connected to the business.  The restaurant MCDONALD’S is also a great example of a surname that has achieved acquired distinctiveness (secondary meaning) where the average consumer does not immediately see a surname when viewing this trademark.

To achieve federal trademark registration, a surname name must be used as a trademark.  In other words, the surname name must be used as a source identifier to distinguish the goods and/or services associated with the surname. To serve as a trademark or achieve federal trademark registration, the personal name, even a well-known celebrity name, must be used in connection with goods and/or services. For a detailed discussion on the 45 different trademark classifications in which a good and/or service is categorized, see our page on Trademark Classification.

As mentioned above, in addition to the use requirement, a showing of secondary meaning is also required to protect a surname as a trademark. Judge Posner identified three rationales for the rule that requires secondary meaning to create valid trademark rights in a surname:

• A reluctance to forbid a person from using his or her own name in business;
• Some names are so common that consumers will not assume that two products bearing the same name have the same source and will not be confused (e.g., two “Smith’s Café); and
• Preventing a person from using his name as a trademark could deprive consumers of useful, descriptive information.

There are at least three types of evidence of secondary meaning that may be relied upon when applying for surname trademark registration:

• Direct or circumstantial evidence tending to prove that the relevant buyer class associated the trademark with the applicant.
• Proof of five years’ use;
• Evidence of ownership of prior registration on the same mark trademark for closely related goods and/or services.

Note – Secondary meaning is the same thing as acquired distinctiveness.  Some confusion is created by the two labels which mean exactly the same thing and are synonyms.  The more descriptive and the less inherently distinctive the trademark, the greater the quantity and quality of evidence of secondary meaning must be to prove that level of distinctiveness necessary to achieve trademark registration.

This means that a surname that is “primarily merely a surname” can be registered as a trademark with the USPTO only if the owner can prove that, through long and extensive use, the name has acquired distinctiveness or secondary meaning in the marketplace.  As noted above, under the Lanham Act, secondary meaning is a requirement of registration only for trademarks that are primarily merely a surname. If consumers would view the mark as a surname, then proof of secondary meaning is required. On the flip side, if consumers would not see the trademark as a personal name, then proof of secondary meaning may not required.

The Trademark Manual of Examining Procedure (TMEP) states that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes the surname significance from that of a surname to that of a trademark for particular goods or services.  Note, the applicant does not have the burden of proof in a surname determination. Procedurally, if an application is rejected on the basis of the mark being primarily merely a surname, the USPTO examining attorney must present evidence that the applied-for trademark at issue is primarily merely a surname. If the USPTO examining attorney submits evidence that the applied-for trademark is primarily merely a surname, the burden shifts to the applicant to rebut that evidence. If there is any doubt about whether the mark is primarily merely a surname, the Trademark Trial and Appeal Board (TTAB) will resolve that doubt in favor of the applicant. For more information on acquired distinctiveness or secondary meaning, see our discussion on secondary meaning.

While establishing secondary meaning can often be a challenge, a personal name can become a strong mark, such that consumers recognize the name as identifying certain goods and/or services from a particular brand or source. For example, the trademark Ford and McDonald’s are both surnames that serve as strong and effective trademarks. When deciding whether to use your surname as a trademark, the Trademark Trial and Appeal Board (TTAB) has set forth a five factor test courts use to determine if a name is primarily merely a surname – see TMEP §1211.01 “Primarily Merely a Surname.” The five factors are:

• Whether the surname is rare;
• Whether the term is the surname of anyone connected with the applicant;
• Whether the term has any recognized meaning other than a surname;
• Whether it has the structure and pronunciation of a surname; and
• Whether the stylization of lettering is distinctive enough to create a separate commercial impression;

Unless a trademark applicant’s name satisfies each of these five factors, he or she is likely looking at an uphill battle for registering a surname. Therefore, unless a trademark applicant is absolutely set-on using his or her surname in a trademark fashion, exploring more creative options for a trademark may be a better, less challenging (and less costly) path to achieve trademark registration.

Trademark Registration of Famous and Historical Names

Famous and historical names that are widely recognized do not fall into the traditional personal name or surname category. Actually, trademark law permits the adoption of a trademark of the name of a person who achieved fame and distinction, provided the name is not descriptive of the quality or character of the applied-for goods and/or services. Famous and historical names are placed in the same category as inherently distinctive arbitrary marks.  For example, “Caesar’s” is a valid, inherently distinctive trademark for gambling casinos. “Louis XVI” is a valid, inherently distinctive trademark for jewelry.  “Lincoln” is a valid, inherently distinctive trademark for financial and insurance services.

Combining a Surname with Other Unique Terms or Designs

If a portion of a trademark consists of a surname and another term, the entire trademark must be considered when determining if its primarily merely a surname.  Therefore, “Florence X Marine” or “Florence” combined with its burgee flag designs for apparel and surf accessories would not be “primarily merely a surname.”

Combining Two Surnames

A combination of two surnames is not primarily merely a surname, within the meaning of Section 2(e)(4), unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname. Again, you must analyze the entire trademark when determining if its primarily merely a surname.

Surname Combined with Descriptive or Generic Terms

The USPTO has opined in several surname cases that a surname combined with a descriptive or generic term would fall into the surname category.  The USPTO has reasoned that combining a surname with a generic or descriptive term (or design) does not overcome the trademark’s surname significance.  In other words, surnames combined with generic or descriptive terms may be deemed primarily merely a surname. For example, Smith’s Coffee Shop, would likely be deemed a surname that is primarily merely a surname because “Coffee Shop” is simply descriptive and does not add anything inherently distinctive to the trademark.

Surname Combined With Initials

A mark that consists of two or more initials preceding a surname generally will not be deemed primarily merely a surname. However, trademarks consisting of a single initial preceding a surname have been held to be primarily merely a surname.  Again, proposed trademarks that incorporate surnames must be analyzed on a case-by-case basis to determine whether it can achieve trademark status as to the registrable matter.