Many people believe that they have the right to use their last name (i.e. surname) as part of their business name. This makes sense, as many people share the same last name, and have an interest in using it for their business. And, for the most part, it is also true. But, as usual where trademarks are concerned, the law is not completely straightforward. Can you trademark a surname? This post examines when a small business can use a last name as a trademark, and when it can prevent others from using their own last name.
By law, the PTO may refuse a trademark that is “primarily merely a surname.” This means that, as a general rule, a person cannot trademark his or her last name. This rule reflects the common understanding that any person may use his or her name as a source identifier for their goods or services. But, of course, there are exceptions. There are two main questions that must be answered: (1) is the mark primarily a surname, and (2) if so, has it acquired distinctiveness?
Is the Mark Primarily a Surname?
The first question, of course, is whether the mark is actually a surname. If the mark is not primarily a surname, it should be registered (absent any other problems with the mark). If it is, it should not register unless it has acquired distinctiveness. To determine this, the PTO looks at five factors:
- Rarity – extreme rarity weighs against refusal, presumably since fewer people are forbidden to use an extremely rare name.
- Connection to Applicant – If the mark is not the applicant’s surname, it is less likely to be considered a surname
- Recognized Meanings – If the mark has other recognized meanings, it is less likely to be a surname. Conversely, if it has no meanings, it is more likely to be a surname.
- Structure and pronunciation – This somewhat vague factor refers to whether the examiner believes that the mark “looks like” a surname.
- Stylization – A distinctive design element can turn a word that is a surname into a mark that is not primarily a surname.
The recognized meaning factor is particularly useful. For example, if the mark has a geographical significance or is the name of a historical place or person, these are factors that weigh against a finding that the mark is primarily a surname. Similarly, if the mark has a recognized meaning in a foreign language, this can weigh against it being refused.
Another important factor are the additional elements (such as words or designs) present in the mark. Some things (“Dr.”, “Inc.”, plurals, or possessives) do not affect meaning and will usually not render a surname registrable. On the other hand, adding initials (“D. Ferrance”) turn a surname into a personal name, making a refusal less likely. Similarly, a combination of multiple surnames (“Holmes & Scholl”) is not usually considered as a surname. Ornate designs can render a mark not primarily a surname. The ultimate question is whether the mark would be primarily perceived by the public as a surname.
Has the Mark Acquired Distinctiveness?
If the mark is primarily a surname, it can only be registered if there is evidence of “acquired distinctiveness,” also known as “secondary meaning.” In other words, the applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product.
There are three basic ways to show secondary meaning, some easier than others:
- Prior registrations – the applicant owns one or more registrations for the same surname for similar or related goods or services
- Five year’s use – the applicant shows substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made
- Other evidence – the applicant shows evidence of copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, or consumer studies (linking the name to a source)
Some of these methods will be easier than others. For example, the PTO says that “for most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness.” Proving secondary meaning by actual evidence, on the other hand, can require expensive surveys and market research. For marks that have been used for less than five years, it may make more sense to simply select an inherently distinctive mark.
Don’t forget that registering a surname as a trademark still must overcome other registration requirements, including but not limited to use in commerce as a source identifier and no likelihood of confusion with another pre-existing trademark.
What Does Refusal Actually Mean?
When the USPTO refuses to register a trademark, what it simply means is that the trademark application is rejected, and you lose your money (the fees are non-refundable). Furthermore, because it takes approximately six (6) months to hear back from the USPTO, you lose valuable time and effort (i.e. do you sit around with your mark, waiting for word from the USPTO? Or, do you use it in commerce, place it on expensive packaging, signs, advertisements, yellow pages, etc, only to have to redo everything and think of a new trademark because the USPTO rejected your application?).
There are many non-licensed entities on the Internet offering an inexpensive price to register a trademark for you, but unless they are actually a law firm or properly licensed US trademark attorney, they will be all too happy to take your money and file your potential trademark, costing you your fees, lost time and effort. This is why the USPTO refusal rate is greater than 70% for non-attorney trademark applicants.