Personal Names and Surnames as Trademarks
When it comes to trademarks, personal names and surnames can often serve as unique identifiers that represent an individual, a business, or a brand. However, the process of registering these as trademarks isn’t as straightforward as it may seem, and one must tread carefully to avoid refusals from the United States Patent and Trademark Office (USPTO) under Section 2(e)(4), the clause that concerns trademarks being “primarily merely a surname”.
Firstly, it’s crucial to understand that personal names or surnames can indeed be registered as trademarks under the Lanham Act, provided they meet certain criteria. The fundamental principle here is that the name needs to have acquired distinctiveness, also known as “secondary meaning”, in the marketplace. In simpler terms, the name should be recognized by consumers not just as a name, but as a symbol that distinguishes the source of certain goods or services.
Achieving secondary meaning can be accomplished through long and exclusive use of the name in commerce, significant advertising and marketing efforts, successful sales records, or widespread recognition among the public. For famous individuals, their names may be considered immediately distinctive, making them eligible for registration without proving secondary meaning.
However, it is not uncommon for trademark applications to register surnames to face refusal under Section 2(e)(4) of the Lanham Act, which states that a trademark may be refused if it is “primarily merely a surname”. To avoid such refusals, it’s important to provide evidence that the name has acquired secondary meaning in the marketplace. If the surname is unusual or unique, it may be easier to argue that consumers don’t perceive it primarily as a surname. On the other hand, common surnames may face more challenges.
It is also beneficial to demonstrate that the surname has been used in commerce for a significant amount of time and that substantial advertising and marketing investments have been made to promote the name in association with the goods or services.
An alternative approach is to register the name on the USPTO’s Supplemental Register if it has not yet achieved the necessary distinctiveness. While this is a secondary list of trademarks, it provides some protection and can be a stepping stone towards achieving the distinctiveness required for registration on the Principal Register.
Lastly, a well-conceived trademark that combines a surname with other distinctive terms or designs can also help to avoid a Section 2(e)(4) refusal. For example, if a mark consists of a first name alone, first and last name together, or a last name combined with two initials, then the name can (depending on the circumstances) overcome the “primarily merely a surname” preclusion. The other requirements for a valid trademark, however, still must be satisfied for the trademark to proceed to registration. For example, not only must the personal name act as a source identifier but it cannot cause a likelihood of confusion with another pending application or registered mark. If a personal name causes a likelihood of confusion with another trademark that is pending or registered, the trademark application may be suspended or refused.
Primarily Merely A Surname – Section 2(e)(4) “Surname” Refusal
The United States Patent and Trademark Office (USPTO) has specific criteria that trademarks must meet before they can be registered. One key provision of the Lanham Act, which governs trademark law in the US, is Section 2(e)(4). This section of the law permits the USPTO to deny registration of a trademark on the grounds that it is “primarily merely a surname”.
In essence, Section 2(e)(4) is designed to prevent one person or entity from claiming exclusive rights to a surname without showing that it has acquired distinctiveness, or “secondary meaning”. The reasoning behind this provision is rooted in fairness, as it allows families to use their own surnames in business without infringing upon someone else’s trademark rights.
When evaluating whether a mark is primarily merely a surname, the USPTO considers several factors:
Whether the surname is rare: If the surname in question is unusual or rare, it’s less likely to be perceived as primarily a surname by the public, which can help the mark avoid a refusal.
Whether the term is the surname of the applicant: If the term is the surname of the person applying for the mark, the USPTO may be more likely to view it as primarily merely a surname.
Whether the term has any recognized meaning other than as a surname: If the term has a well-known meaning in language other than as a surname, it could be seen as more than primarily merely a surname.
Whether it has the “look and feel” of a surname: If the term has the structure and phonetic impact typical of a surname, it may be more likely to be perceived as a surname by the public.
Whether the term is stylized or combined with other words or logos: A surname that is stylized or combined with other distinctive elements is less likely to be considered primarily merely a surname.
If the USPTO determines that a mark is primarily merely a surname, it can refuse registration of the mark on the Principal Register. However, it’s worth noting that this refusal does not mean the end of the road for potential registration. If the surname has acquired secondary meaning, or if it’s eligible for the USPTO’s Supplemental Register, the trademark could still be registered. The Supplemental Register, while not offering as many benefits as the Principal Register, can serve as a stepping stone towards achieving the distinctiveness required for Principal Register.
Combining a Surname with Other Unique Terms or Designs
A trademark applicant can often successfully register a surname as part of a trademark if it is combined with other unique terms or designs. This strategy can also potentially avoid a surname refusal from the United States Patent and Trademark Office (USPTO).
Under the Lanham Act, a surname can’t typically be registered as a trademark if it is “primarily merely a surname,” as per Section 2(e)(4). However, this generally applies when the surname is used alone. If the surname is combined with other words, symbols, or design elements that make the overall mark distinctive, it may be registerable.
The key consideration here is whether the combined mark is distinctive as a whole, meaning it can serve to identify and distinguish the source of certain goods or services. The unique terms or designs used in combination with the surname should contribute significantly to the distinctiveness of the mark.
A good example might be a business owner whose last name is “Smith.” If he applies to register “Smith” as a trademark for his business, he might face a surname refusal. But if he instead applies for “Smith’s Solar Solutions” along with a unique logo, the mark is more distinctive and is less likely to be seen as “primarily merely a surname.”
It’s important to note that each case is unique and the USPTO evaluates every trademark application on its individual merits.
Combining Two Surnames
Combining two or more surnames can help a trademark applicant achieve registration and potentially avoid a surname refusal from the United States Patent and Trademark Office (USPTO).
Under the Lanham Act, the USPTO can refuse to register a trademark if it is “primarily merely a surname”. However, this does not always apply when multiple surnames are combined.
When two or more surnames are combined without any additional terms or design elements, the determination of whether the mark is “primarily merely a surname” depends on a few factors. One key factor is the perception of the purchasing public – if the combination of surnames is perceived as a surname, then it may still be refused under Section 2(e)(4).
However, if the combination of the surnames results in a term that is not recognized as a surname by the public, it is possible that the mark could be deemed distinctive and therefore registerable.
For instance, if the surnames are relatively rare and their combination does not have any recognizable meaning other than as a trademark, it may be possible to argue that the mark is not “primarily merely a surname.”
Surname Combined with Descriptive or Generic Terms
Combining a surname with descriptive or generic terms can sometimes help a trademark applicant to achieve registration. However, it’s important to note that adding descriptive or generic terms to a surname does not automatically ensure that the mark will be considered distinctive and registerable.
The United States Patent and Trademark Office (USPTO) generally requires a trademark to be distinctive to be eligible for registration. A distinctive trademark is one that can identify the source of goods or services and distinguish them from those of other entities.
If the terms added to the surname are merely descriptive or generic for the associated goods or services, the USPTO may still deem the overall mark to be insufficiently distinctive. This is because the addition of descriptive or generic terms often doesn’t add a significant level of distinctiveness to the mark. For instance, if the surname is “Johnson” and the descriptive term is “Plumbing,” the mark “Johnson Plumbing” may still be perceived as primarily merely a surname in relation to plumbing services.
However, if the surname has acquired distinctiveness, or “secondary meaning”, in the marketplace, it could potentially be registered even in combination with descriptive terms. Secondary meaning implies that through substantial use, advertising, and consumer recognition, the name is recognized as a source identifier for the goods or services, not just a surname.
Surname Combined With Initials
an applicant can potentially achieve trademark registration and avoid a surname refusal from the United States Patent and Trademark Office (USPTO) by combining a surname with initials. However, the success of this approach largely depends on whether the resulting mark is perceived as distinctive to the purchasing public.
Under Section 2(e)(4) of the Lanham Act, a mark can be refused registration if it is “primarily merely a surname.” If initials are added to a surname in a manner that creates a distinctive mark, the resulting mark may be less likely to be viewed as primarily merely a surname, which can potentially help avoid a refusal.
For example, if a person named John A. Smith wanted to register a trademark for a product or service, a trademark application for “Smith” might face a surname refusal. But if John applies for a trademark for “J.A. Smith” or “JAS”, the USPTO may be less likely to view the mark as primarily merely a surname because the addition of the initials makes the mark more distinctive.
However, whether the addition of initials to a surname will make the mark distinctive enough for registration can depend on a variety of factors, such as the uniqueness of the surname, the overall impression of the mark, and how the mark is used in commerce. It’s also worth noting that if the initials and surname combination is still perceived primarily as a personal name, it may need to acquire secondary meaning before it can be registered.
Trademark Registration of Famous and Historical Names
Famous and historical names that are widely recognized do not fall into the traditional personal name or surname category. Actually, trademark law permits the adoption of a trademark of the name of a person who achieved fame and distinction, provided the name is not descriptive of the quality or character of the applied-for goods and/or services. Famous and historical names are placed in the same category as inherently distinctive arbitrary marks. For example, “Caesar’s” is a valid, inherently distinctive trademark for gambling casinos. “Louis XVI” is a valid, inherently distinctive trademark for jewelry. “Lincoln” is a valid, inherently distinctive trademark for financial and insurance services.