Overcoming Trademark Refusals Based on Surnames: Strategies and Legal Considerations

One common ground for refusal by the United States Patent and Trademark Office (USPTO) is that a proposed mark is primarily merely a surname under Section 2(e)(4) of the Lanham Act. In other words, incorporating a surname into a brand name may present challenges when seeking trademark registration. This article explores those challenges and the strategies available to overcome them.

• Understanding the “Primarily Merely a Surname” Refusal

The USPTO may reject a trademark application if it determines that the mark is “primarily merely a surname.” This means that the primary significance of the mark, in the eyes of the public, is that of a last name rather than a brand identifier. The rationale behind this refusal is that surnames are commonly shared among individuals, and granting exclusive rights to a single party could unfairly restrict others from using their own names in commerce.

To determine whether a mark is primarily merely a surname, the USPTO considers several factors, including:

• Rarity of the Surname: If the surname is common, the refusal is more likely. Less common surnames may have a stronger chance of registration.
• Association with a Business or Industry: If the name is widely recognized in a specific industry, it may be deemed primarily a surname.
• Other Meanings: If the word has a recognized non-surname meaning, it may not be considered “primarily” a surname.
• Trademark Applicant’s Association with the Surname: If the mark is the applicant’s own surname, it may still be refused, but additional arguments can be made.
• Presentation and Stylization: The use of a distinctive design, logo, or unique presentation may help differentiate the mark from a mere surname.
• Strategies for Overcoming a Surname-Based Refusal

While a refusal based on a surname can present challenges, several legal strategies can be employed to overcome the rejection:

• Arguing That the Mark Has Acquired Distinctiveness (Secondary Meaning)

One of the most effective ways to overcome a surname refusal is by demonstrating that the mark has acquired distinctiveness under Section 2(f) of the Lanham Act. This means that, through extensive and continuous use, consumers have come to recognize the mark as a brand identifier rather than just a surname. Evidence to support this claim includes:

• Longstanding Use in Commerce: The longer a mark has been in use, the stronger the argument for acquired distinctiveness.
• Sales and Advertising Figures: Demonstrating significant market presence through advertising expenditures and sales revenue.
• Consumer Recognition: Customer declarations, surveys, or media coverage that show the mark is recognized as a brand.
• Prior Registrations: If similar marks owned by the applicant have been registered, they may support a claim of distinctiveness.
• Arguing That the Mark Has a Non-Surname Meaning

If a mark has an alternative meaning beyond a surname, the applicant can argue that the primary significance to the public is not as a surname. For example, if the surname is also a common word in the dictionary, the applicant may present evidence that consumers recognize it for its other meaning rather than as a surname.

• Demonstrating That the Surname Is Rare

If the applicant can show that the surname is not commonly used, this weakens the USPTO’s argument that the public primarily perceives it as a surname. The applicant may present evidence from databases or surname frequency studies to demonstrate its rarity.

• Using a Stylized Design or Logo

Trademark protection extends beyond word marks to include stylized versions and logos. If the surname is incorporated into a distinctive design, the applicant may be able to register it as a logo mark rather than a standard character mark. While this does not provide exclusive rights to the surname itself, it does offer protection for the mark in its stylized form.

• Seeking Registration on the Supplemental Register

If a surname mark does not yet qualify for the Principal Register due to lack of distinctiveness, it may still be eligible for the Supplemental Register. While marks on the Supplemental Register do not enjoy the full protections of those on the Principal Register, they still provide important benefits, such as the right to use the ® symbol and protection against later-filed confusingly similar marks. Over time, if the mark acquires distinctiveness, the applicant may petition to move it to the Principal Register.

• Conclusion

Trademark refusals based on surnames can be challenging, but they are not insurmountable. By strategically arguing acquired distinctiveness, demonstrating alternative meanings, proving rarity, utilizing stylization, or leveraging the Supplemental Register, applicants can increase their chances of securing trademark protection. Given the complexities of trademark law and the nuances of overcoming refusals, consulting with an experienced trademark attorney can be invaluable in navigating the application process and protecting brand identity effectively. Click HERE to read more about Derek Fahey, the author of this article.