Your Name as a Trademark–What You Need to Know
As a general rule, the U.S. Patent and Trademark Office will refuse trademark registration under 15 U.S.C. 1052(e)(4) for a mark that is “primarily merely a surname”. While this is the general rule, there is still some wiggle room for getting a surname registered through the USPTO.
Just to be clear, this rule applies to all surnames, regardless of whether the surname is yours, someone you know, or is completely arbitrary. Keep in mind, however, that 15 U.S.C. 1052(c) requires the written consent of another to use their name or likeness as a trademark.
The general refusal of surnames does not apply to all surnames, however. Rather, the rule is that a mark will be refused under 15 U.S.C. 1052(e)(4) if the general consuming public would recognize the mark as a surname. The Trademark Manual of Examining Procedure (TMEP) section 1211.01 sets out the five factors that will be considered in determining if a mark is a “surname”:
- Whether the surname is rare.
- Whether the surname is of anyone connected to the applicant.
- Whether the term has a recognized meaning other than a surname.
- Whether the term has the “look and feel” of a surname.
- Whether the mark uses stylized lettering or drawing that would indicate it is being used as a mark.
The rarity of a surname is arguably the most important factor in a “surname” evaluation by the USPTO. In cases such as In re Joint-Stock Company “Baik”, 84 USPQ2d 1921 (TTAB 2007) the Trademark Trial and Appeal Board (TTAB) has held that a surname was so rare that 15 U.S.C. 1052(e)(4) does not apply. The rationale behind this rule is that if a surname is rare enough the consuming public will not recognize it as a surname. There is no firm rule, however, as to how rare the name must be to qualify. While this test is based in numbers (the number of people with a particular name), the “look and feel” test works on similar grounds. Essentially the USPTO is looking to see if the consuming public would recognize the mark as a surname.
A surname may also be acceptable as a mark if it also has another meaning. A mark must be primarily a surname for registration to be refused. For example, the name “Bird” in Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) was accepted despite “Bird” being a surname.
Even if your surname would fail under the factors described above, it still may be suitable for registration if you can show the mark has “acquired distinctiveness” under 15 U.S.C. 1052(f). This works because surnames are considered descriptive, and descriptive marks are generally not able to be registered. The factors in TMEP § 1211.01 (discussed above) are used to determine if the surname is descriptive. It is for this reason that a name combined with other descriptive words cannot be registered. For example ‘Mason’s Painting Service’ would generally be unacceptable as a mark, since all three words are considered descriptive.
Descriptive marks can still be registered if they have acquired distinctiveness – i.e. the consuming public recognizes the term as a mark, not a descriptive phrase. In some cases, showing that you have used the mark as a name for five or more years will be sufficient to show acquired distinctiveness. Other factors that are used to show acquired distinctiveness are listed in TMEP § 1212.06 and include:
- Amount of time you have used the surname as a mark.
- How much you have spent on advertising the mark and the extent to which it has been advertised.
- Survey evidence showing consumers recognize your surname as a mark.
- Other direct evidence that users view your surname as a mark.
So while it is possible to use your surname as a mark you must do one of the following to achieve registration:
- Prove that your surname is not descriptive based on the factors in TMEP § 1211.01.
- Prove that your surname has acquired distinctiveness based on the factors in TMEP § 1212.06.
The important thing to keep in mind from this article is that while it is possible to register your surname as a mark with the USPTO, it is a more complicated process and care should be taken to ensure you have a good chance of registering your surname before shelling out the money for the application.
Once your mark has gained federal registration through the USPTO you have a right to exclude others from using your mark throughout the entire United States. Please go here to learn more about registering a trademark.
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