Absent proving acquired distinctiveness, trademarks that are primarily a surname cannot be registered on the USPTO’s principal register.
Under section 2(e)(4) of the Lanham Act, a trademark that is primarily a surname cannot be a registered trademark. If a trademark Examining Attorney determines a trademark application is primarily merely a surname, he or she will issue an Office Action. The Examining Attorney must establish a prima facie case the trademark is primarily a surname, and then it is up to the trademark applicant to rebut the finding, or submit a 2(f) acquired distinctiveness statement and evidence, in order for the application to move forward.
It is important to remember, a surname will be refused registration on the principal register, but can still be registered on the supplemental register.
The test to determine whether a trademark is primarily a surname, as laid out by the Trademark and Trial Appeal Board (TTAB), consists of four factors (with a comment about each below):
The degree of the surname rareness;
Whether anyone connected with applicant has the surname;
Whether the term has any recognized meaning other than that of a surname; and
The structure and pronunciation or “look and sound” of the surname.
These four factors are what guide Examining Attorneys when they make the determination a trademark is primarily merely a surname.
If the Examining Attorney does issue an Office Action based on a surname refusal, an applicant has two options. The applicant can fight the refusal by arguing that the trademark is not primarily a surname and argue how the Examining Attorney got it wrong. Ultimately, if the Examining Attorney and the applicant disagree, the applicant can appeal ex parte to the TTAB.
An Office Action based on a surname refusal, as seen in the Trademark Status & Document Retrieval (TSDR) System.
The other option to debating whether the trademark is primarily a surname is to submit evidence under section 2(f) that the trademark as acquired distinctiveness. As with all 2(f) determinations, the trademark applicant will need to submit evidence such as sales revenue, and consumer surveys showing they identify the surname as a trademark, showing the trademark has acquired distinctiveness in the minds of relevant consumers.
If you have any questions about how an Examining Attorney concludes a trademark is primarily a surname or how to get a trademark registration for a surname, leave a comment below or contact us.