Under U.S. Trademark law, “a mark that is primarily merely a surname is not registrable on the Principal Register.” See TMEP § 1211. However, by “acquiring distinctiveness” the mark may register on the Principal Register. Id.
How Do I Know If My Surname is Primarily A Surname?
When examining your trademark application, the examining attorney will determine whether or not your trademark is “primarily” a surname before issuing a refusal. In making this determination, the Trademark Trial and Appeal Board (TTAB), provides several examples of what may lead to evidence for such refusal. Evidence includes:
- Whether the surname a rare surname;
- Whether the term is the surname of anyone connected with the applicant;
- Does the term have any recognized meaning other than as a surname;
- Whether it has the “structure and pronunciation” of a surname; and
- Whether the stylization of lettering is distinctive enough to create a separate commercial impression.
So, What Does This Mean for Me?
Overall, if you are attempting to register a trademark based on your family or “surname,” then there is a chance that the application will be, at least initially, refused registration. To overcome this refusal, you must show to the Patent and Trademark Office (PTO) that your mark has acquired distinctiveness. This requirement is based on the understanding that many people share common surnames. It would be impracticable to prevent people who share a surname with another to prevent them from using their name. Thus, the PTO has the “acquired distinctiveness requirement.” This requirement ensures that any surname that the PTO allows to register has built up goodwill and is well known in relation to the goods.
Examples of Surnames That Have Acquired Distinctiveness Include:
Kellogg’s – Founded by Will Keith Kellogg.
McDonald’s – Founded by Richard and Maurice McDonald.
Accordingly, while using a surname may seem like a great trademark choice, they are not always the best from a registration or enforcement aspect. This is especially the case when different family members may seek to register similar trademarks using their names.
However, if you are set on using your name, there are several things that you can do to increase the chances of your application going through.
- Combine multiple surnames together into one mark (e.g., SURNAME 1 & SURNAME 2);
- Add your initials to the front of the mark;
- Incorporate other information along with your surname; and
- Add a design element.
Supplemental Register Amendment
Furthermore, as a last resort, registration on the Supplemental Register can be available. Registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register. However, it does provide the following advantages:
- The registrant may use the registration symbol ®;
- The registration is protected against the registration of a confusingly similar mark under Trademark Act Section 2(d);
- The registrant may bring suit for infringement in federal court; and
- The registration may serve as the basis for filing in a foreign country under the Paris Convention and other international agreements.
The main limitation of the Supplemental Register is your mark would not have any statutory presumption that the term is a trademark and not a generic name. Thus, if you were to be sued or are suing in the future regarding your mark, you would still have the burden to prove that your mark is known in that particular geographic area, in that industry, and in association with the goods and services.
On-the-other-hand, if your mark was registered on the Principal Register, the burden of proof is on the other party to prove that the registered mark does not have exclusive rights of ownership, rights of use, and rights of validity.