Trademarking Surnames - the 2(e)(4) surname objection

Under U.S. trademark law, a mark that is "primarily merely a surname" is not eligible for registration on the Principal Register or entitled to the legal presumptions and benefits of a registered trademark, unless the applicant can prove the mark has acquired distinctiveness (also known as "secondary meaning") as a source identifier for the applicant's goods or services. This rule reflects the general policy that all individuals should be able to use their own surname to identify their business and that no one should be able to monopolize a surname as a trademark to the exclusion of others who share that name. The United States Patent and Trademark Office (USPTO) will refuse registration of a mark as primarily merely a surname if its primary significance to the purchasing public is that of a surname, rather than as a trademark that identifies the source of the applicant's goods or services.

How does the USPTO make a Surname Objection?

To make this determination, the USPTO weighs several factors:

1. The rarity of the surname - A very rare surname is less likely to be perceived as primarily merely a surname. However, even a rare surname may be unregistrable if the public would still perceive it as a surname rather than a mark.
2. Whether anyone connected with the applicant has the surname - If the surname is the name of the applicant or anyone associated with the applicant (like an owner or founder), that weighs in favor of a finding that the mark is primarily merely a surname.
3. Whether the term has any recognized meaning other than as a surname - If the surname has another widely recognized meaning, like a geographic term or dictionary word, it may not be primarily merely a surname. But an obscure non-surname meaning may not be enough to overcome surname significance.
4. Whether the term has the structure and pronunciation of a surname - Some names simply have the look and sound of a surname, even if they are rare.
5. Whether stylization or design elements create a separate commercial impression - Distinctive stylization or design used with the surname may make it registrable as a whole, even if the surname itself is not.

1. Argue the mark is not primarily merely a surname - The applicant can submit evidence and arguments against the refusal, trying to establish that the mark's primary significance is not merely a surname based on the factors above. For example, they may show the name is very rare, has other recognized non-surname meanings, or has a fanciful or arbitrary sound.
2. Prove acquired distinctiveness - The applicant can try to prove that even if the mark is primarily merely a surname, it has acquired distinctiveness (secondary meaning) as a source identifier for their goods/services. This usually requires submitting evidence of at least five years' substantially exclusive and continuous use of the mark in commerce, or other evidence like sales and advertising figures, media coverage, and consumer statements showing that the public has come to recognize the surname as a trademark.
3. Amend to the Supplemental Register - If the applicant cannot overcome the refusal or prove acquired distinctiveness, they can amend the application to seek registration on the Supplemental Register instead. This provides some trademark rights, but not the full legal presumptions of the Principal Register.
4. Combine the surname with other registrable matter - Adding distinctive wording or design elements to the surname may make the overall mark registrable on the Principal Register, even if the surname itself must be disclaimed. For example, using the surname with a first name, initials, title (like "Dr."), or fanciful term may create a registrable personal name or composite mark.
5. Argue the name is famous - A surname that has become very well-known to U.S. consumers as a trademark - like FORD, MCDONALD'S, or CALVIN KLEIN - may be registered without proving acquired distinctiveness. But this is a high standard requiring extensive evidence.

Some of the largest companies have been successful in overcoming surname objections.

Additional Strategies for registering a Surname

Some additional strategies for protecting and enforcing surname trademarks include:

1. Obtain state trademark registrations - Even if a surname does not qualify for federal registration, some states allow registration of surname marks under state law. State registrations provide rights within that state.
2. Establish common law rights through use - Unregistered trademarks, including surnames, can still be protected under common law based on use in commerce. The user should document when and where they began using the surname as a mark.
3. Use the ™ symbol - Using ™ with the surname alerts consumers that it is being used as a trademark, even if not registered. The ® symbol should only be used with surnames registered on the Principal Register.
4. Police and enforce the surname mark - Monitoring and promptly challenging unauthorized uses of the surname by third parties can help establish and maintain trademark rights in a surname. Enforcement options include demand letters, UDRP actions, opposition/cancellation proceedings, and infringement lawsuits.
5. Secure domain names incorporating the surname - Registering key domain names containing the surname can help prevent others from usurping the name and direct more traffic to the mark owner's own website.
6. Use the surname with other marks - Using the surname in combination with other distinctive marks (like a first name, logo, or slogan) can help create stronger trademark rights in the surname over time as part of a larger brand identity.
7. Avoid using the surname descriptively or generically - Consistently using and displaying the surname as a proper adjective modifying the generic product name ("SMITH shoes") rather than as a noun for the products themselves ("SMITHS") can help avoid the surname becoming generic.
8. Educate the public - Advertising and labeling that identifies the surname as a trademark and refers to the family story and history behind the name can influence public perception of the surname as a brand.
9. Leverage the family identity and story - Incorporating the real family behind the surname mark into the brand image and messaging can make the surname feel more distinctive as referring to that particular family rather than just any people with that surname.
10. Expand use and promotion of the surname mark - Registering and using the surname with additional products and services beyond the initial core business can expand trademark rights in the surname. Extensive advertising and publicity can also help establish the surname as a well-known mark.

In conclusion, while surnames are not entitled to automatic trademark protection and often face initial refusals based on being primarily merely a surname, brand owners can use a combination of strategies to overcome refusals, prove acquired distinctiveness, and build stronger and broader trademark rights in their surnames over time through careful use, promotion, and enforcement. The key is making the primary significance of the surname to the relevant public be that of a distinctive brand, not just a person's name. With the right evidence and approach, many surnames have become some of the most valuable and well-known trademarks in the world.