Can You Trademark a Surname?

Can You Trademark a Surname?

Welcome to our comprehensive guide on trademarking surnames! In the vast landscape of intellectual property, trademarks serve as indispensable assets, distinguishing your brand in a crowded marketplace. Yet, when it comes to trademarking surnames, the journey is often met with unique challenges and considerations. From navigating legal intricacies to understanding the role of rarity and historical significance, there’s much to uncover.

Join us as we explore the nuances of trademarking surnames, providing insights and guidance to help you navigate this complex terrain with confidence. Whether you’re a budding entrepreneur or an established business owner, this guide will equip you with the knowledge and tools necessary to protect your brand identity effectively.

Trademark Definition

In the business world, a trademark is like a special label that makes your goods or services stand out. It could be a word, a picture, or a design that people easily recognize.

trademark definition

Trademarks help customers identify and remember your brand. Whether it’s for a product or a service, trademarks show where things come from, legally protect your brand name, and keep fake products away. But remember, having a trademark doesn’t mean you own a word completely. It just means you have the right to use it for specific things.

Limitations on Registering a Trademark Surname

According to a section of the Trademark Act, a mark that’s mainly just a surname can’t be registered on the Principal Register unless it shows it has gained distinctiveness under §2(f). Simply having a surname isn’t enough to claim exclusive rights over it unless it’s been used for a long time and exclusively for certain goods or services, changing its meaning from just a name to a trademark. Since surnames are often shared by many people who might want to use them in business, the law requires proof of distinctiveness.

trademark refusal on basis of surname

Let’s talk about this section of the aforementioned Trademark Act and what it means for your business:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which . . . (4) is primarily merely a surname.”

So, What Does "Primarily Merely a Surname" Mean?

When the USPTO evaluates whether a mark is “primarily merely a surname,” they focus on how the mark is perceived by the general public. This means they consider whether the term, when applied for as a trademark, is mainly recognized as just a last name.

merely a surname trademark refusal definition

Each case is unique and decided based on its own evidence. There’s no set rule about what evidence is needed to prove that consumers see a term as primarily just a surname.

5 Key Inquiries by the USPTO

The USPTO considers five main questions to gather evidence about how the public perceives a term:

  1. Rarity of the Surname: Is the surname uncommon?
  2. Association with Applicant: Is the surname connected to the applicant?
  3. Alternative Meanings: Does the term have other recognized meanings besides being a surname?
  4. Structure and Pronunciation: Does the term sound and look like a surname?
  5. Distinctive Styling: Is the lettering style unique enough to create a separate impression? (Note: This doesn’t apply if the mark is in standard characters.)
Decoding Trademark Perception USPTO's 5 Surname Inquiries

These inquiries aren’t the only factors considered. The USPTO may look at any relevant circumstances when deciding if a term is primarily merely a surname.

If there’s uncertainty about whether a term qualifies as primarily merely a surname, the USPTO typically gives the benefit of the doubt to the applicant.

Exploring the nuances of trademark surname refusals is crucial when navigating the trademark registration process with the USPTO.

Let’s delve into just five of the many key factors the USPTO carefully examines to determine the appropriateness of such refusals.

The Role of Rare Surnames in Trademark Determinations

Rare surnames can play a role in deciding if a term is mainly just a last name. However, just because a surname is uncommon doesn’t automatically mean a term isn’t primarily seen as a surname. Even if a last name is rare, it can still be seen as mainly a surname if that’s how most people perceive it when they’re buying something. The key question is whether most buyers see the term as a last name.

In re Joint-Stock Company “Baik,” the TTAB ruled against the examining attorney and declared that “Baik is an extremely rare surname…the examining attorney has failed to meet the burden of establishing a prima facie case that BAIK is primarily merely a surname. Accordingly, [the TTAB must] conclude that BAIK is not primarily merely a surname.”

understanding the role of rare surnames

When figuring out how uncommon a term is, it’s important to look at whether it gets a lot of attention in the media or if public figures with that surname are in the news. Even if a surname doesn’t show up often in birth records, it might still be widely known because of news stories, making it familiar to many people.

An example of a rare surname that was still refused trademark registration is BELUSHI. Though, Belushi is a rare surname in the world, the TTAB decision In re Beds & Bars Limited, ruled that “[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.” BELUSHI “is so well-known as a result of media publicity that it would be immediately recognized as a surname.”

The Importance of Non-Surname Significance in Trademark Registration

When the USPTO talks about non-surname significance, they’re referring to the idea that a word might have importance beyond just being someone’s last name. To decide if a term can be registered as a trademark, the examining attorney has to figure out what meaning the public primarily associates with it. If there’s proof that a word doesn’t really mean anything else apart from being a last name, it strengthens the argument that its main significance lies in being a surname.

Understanding the Role of Ordinary Language Meaning in Trademarking Surnames

When it comes to determining if a term can be registered as a trademark, its ordinary language meaning plays a crucial role. If a term has a well-known meaning aside from being a last name, and that meaning is more prominent than its status as a surname, then registration on the Principal Register can be granted without needing to prove it has acquired distinctiveness.

For instance, in the case of Isabella Fiore LLC, the term “Fiore” wasn’t considered primarily just a last name because it also translates to “flower” in Italian, and this alternative meaning isn’t obscure.

However, merely finding another meaning of a term doesn’t automatically bypass a refusal. Even if there are other non-surname meanings, a term can still be deemed primarily just a last name, as seen in Mitchell Miller, P.C. v. Miller, where “Miller Law Group” was primarily seen as a surname for legal services despite other interpretations of “miller.”

Ordinary Language Meaning in Trademarking Surnames

The Board said “The question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods or services at issue, that non-surname significance is the mark’s primary significance to the purchasing public.”

Understanding the Impact of Geography on Surname Trademarking

Geographical significance can influence whether a term is seen as primarily just a surname. If a term has a well-known meaning tied to a specific place, it might not be considered mainly a last name. For example, in the case of Colt Industrial Operating Corp., the term “Fairbanks” was deemed not primarily merely a surname because its importance as a geographical location was just as strong as its significance as a last name.

However, even if a term has some minor association with a place, it doesn’t automatically overshadow its primary significance as a surname. In the case of Hamilton Pharmaceutical Ltd., “Hamilton” was still considered primarily just a surname despite any minor geographical connotations.

Navigating Historical Connections in Trademarking Surnames

When considering whether a term can be trademarked as a surname, its connection to a historical place or person is significant. For instance, in the case of Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., the term “Da Vinci” wasn’t seen primarily as just a last name because it mainly brings to mind the renowned figure, Leonardo Da Vinci.

“The contention that the mark is primarily a surname and hence barred from registration on the principal register…is met by the fact that names of historical characters or noted persons are registrable, provided the primary connotation of the mark is of the historical character… the name Da Vinci, even without the given name Leonardo, comes very near having as its exclusive connotation the world-renowned 15th century artist, sculptor, architect, musician, engineer and philosopher.”

Historical Connections in Trademarking Surnames

However, in the case of Champion International Corp., “McKinley” was still primarily considered merely a surname despite its association with a deceased president.

It’s important to note that being famous in a specific field doesn’t automatically make someone a historical figure. In the case of Binion, despite the applicant’s significant role in the gaming industry, the term “Binion” was primarily deemed merely a surname because the individual’s notoriety wasn’t seen as remarkable or significant enough to qualify as a historical figure.

Moreover, if a surname evokes numerous individuals rather than one specific historical person, it doesn’t meet the criteria of being a historical name and is simply considered a surname associated with various people of differing historical significance.

To sum up…

navigating the intricacies of trademarking surnames requires careful consideration of various factors, from rareness and non-surname significance to geographical and historical connections. Understanding these nuances is vital for ensuring a smooth trademark registration process. At TradeMark Express, we specialize in assisting businesses with trademark registration and providing expert advice tailored to your specific needs. Reach out to us today to learn more about how we can help protect your brand identity and ensure your trademark application stands out.

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DISCLAIMER: References to particular trademarks, service marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement.

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