Surname Refusal Test: Is my name “Primarily Merely a Surname?”

What does “primarily merely a surname” mean?

Many people believe that they have the right to use their last name as part of their business’ name. Why wouldn’t you have exclusive rights to your name? You are likely here because you want to incorporate your name into your trademark. So, can you trademark your name? The answer is, it depends. Trademark law is a complicated area, with many exceptions and factors to balance. By law, the UPTO may refuse a trademark that is “primarily merely a surname.” In other words, generally, a person cannot trademark their last name. The trademark office action refers to this rejection as a “Surname Refusal”.

First, let’s start with the general rule. Under §2(e)(4) of the Trademark Act, a mark that is “primarily merely a surname” is not registrable on the Principal Register without showing a distinctiveness under §2(f) of the Trademark Act.

What does “primarily merely a surname” mean?

The test for determining whether a mark is “primarily merely a surname” depends on the primary significance of the mark as a whole to the public. This is a case-by-case determination. There is no clear or bright rule the court applies. In fact, there are five main inquiries that guide the court in guiding the ultimate decision. The court evaluates the following factors.

1. The rarity of the surname;
2. The surname of anyone connected with the applicant;
3. Any recognized meaning other than as a surname;
4. The “structure and pronunciation” of a surname; and
5. The stylization of lettering is distinctive enough to create a separate commercial impression

These factors are part of a balancing test. Meaning, the Trademark Office Examining Attorney or Court will consider each factor. Accordingly, the Examining will weigh the factors against each other. However, there is no determinative factor in this test. The court applies the facts to the five factors and then determines the outcome. In other words, the results are evaluated on a “case-by-case” basis. Meaning, that this test is fact-specific.

Factor #1: Is the Surname Rare?

There is no specific number that determines if a name is common, uncommon, or rare. Instead, to determine rarity, courts will look at media, public, or common usage of the name.

Factor #2: Is the Surname Connected with an Applicant?

The fact that a term is the surname of an individual associated with the application, is strong evidence of the surname’s significance. This connection could be with an officer or founder, or someone beyond those roles. However, the lack of such an association does not necessarily reduce the likelihood that the mark is perceived as a surname.

Factor #3: Does the term have any recognized meaning other than the Surname?

Many surnames have meanings beyond just the name. The examining attorney must determine the primary meaning of the term. The Office determines the meaning through the public’s perception of the term. Evidence that a term has no recognized meaning, other than as a surname, further supports its primary significance as a surname.

If there is a widely recognized meaning of a term, apart from the surname, the Office should approve the registration. However, this does not mean that an applicant only has to uncover a non-surname meaning of the term to prevent a refusal. The mere existence of other non-surname meanings of a term does not preclude a finding that the term is primarily merely a surname.

“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.”

Factor 4: Does the term have the “structure and pronunciation” of a surname?

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.

HOW TO OVERCOME A SURNAME REFUSAL?

When applying for a trademark, applicants should remember that last names are shared by many. There is no set formula to avoid a surname refusal. However, there are ways to overcome a refusal.

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. This can be complete by doing the following.

1. Submit a claim of ownership of prior surname registrations on the Principal Register; or
2. 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.

Another way to overcome a trademark refusal is by presenting evidence of acquired distinctiveness in support of the surname application. This evidence may include:

1. Promotional materials for the trademark;
2. Marketing spending devoted to those promotions;
3. Testimonials from partnering companies and customers; and
4. Any evidence that recognizes the mark as a source identifier for specific goods and services.

The best advice when applying to trademark a surname is to be prepared. Surname refusal is not uncommon. Applicants should be aware that any mark comprised solely of a surname can be subject to an Office action if it has no other recognized meanings. Therefore, it is best for the applicant to be ready to show that the mark has acquired non-surname significance as part of the evidence to overcome a surname refusal in the future.

Contact Attorney Charles Riddle for a consultation to get your trademark registered. Attorney Riddle is a licensed patent attorney who manages several trademark, copyright, and patent portfolios for clients. With over twenty years of experience in the practice of intellectual property law, attorney Riddle will protect your brand. Visit Esquire Trademarks for more information.