Some names, by their very nature, just look like a surname. Conversely, certain surnames are so rare that they do not even look like surnames. In such cases, courts apply the reasonable application of the “primary significance to the purchasing public” test. The test could result in a finding that the surname, when used as a mark, is arbitrary or fanciful.
An example is in In re United Distillers plc. Here, the Court found the name, HACKLER, does not have the look and feel of a surname. However, just because a word does not have a universal meaning does not mean it automatically has the “look and feel” of a surname.
Examining attorneys allege that the public would perceive a term to have surname significance because of the structure or pronunciation. In such cases, the examining attorney must provide evidence to show that the public would be likely to perceive the mark as a surname.
Factor 5: Does the stylization of lettering is distinctive enough to create a separate commercial impression?
Sometimes, the surrounding words or design can alter a word’s meaning. If coupled with a distinctive or design element, the word may not be primarily merely a surname. However, the mark standing by itself is primarily merely a surname. In re Benthin Mgmt. GmbH, the Court that the stylized display of term BENTHIN to be a factor weighing against a finding that it is primarily merely a surname in public perception.
Additionally, a surname combined with initials is not generally “primary merely a surname.” A mark that consists of two or more initials preceding a surname will typically convey the commercial impression of a personal name and thus generally will not be primarily merely a surname.
On occasion, marks consisting of a single initial preceding a surname have been held to be primarily merely a surname.