Have you recently received an Office Action denying your mark based on a surname refusal? Are you planning on applying for a trademark with your last name as part of the mark?
In either case, you should first understand the potential pitfalls of attempting to register a last name. A surname refusal is a common reason that the USPTO will refuse a mark.
This article will describe:
- What a surname refusal is
- Real-world examples of last names that were rejected and accepted; and
- What you can do if you received a surname refusal.
But first, what is a surname refusal?
A Surname Trademark Refusal happens when the USPTO refuses to register a mark because the mark is only a last name. If the mark is just a last name, then the law cannot give it trademark protections. The USPTO will do this when the last name does not have a “secondary meaning” or an “acquired distinctiveness.”
For example, if you tried to register the mark “Johnson” or “Jones,” then the USPTO will likely deny your application. The denial is because the mark is merely a last name. The USPTO does not allow last names to be registered because many people might share the same last name. For this reason, the USPTO does not want one person to have the rights to a name that many people might have.
However, building brand value is crucial to building a company. If your last name is a part of your brand, there are ways to create a mark that will not be rejected as a surname refusal.
What are some real-world examples of last names that the trademark office refused on the Surname Refusal basis?
Ordinary Language Meaning
Some marks have a readily recognizable last name. This allows the mark to be registered. In these cases, such as with the last name “FIORE,” the public recognizes the significance of the term with a particular brand. In that case, the public does not just recognize the mark with the person whose last name is FIORE. Since FIORE was not ‘primarily merely’ the last name and also had the Italian translation to “flower,” the USPTO approved of the mark.
In another case, the USPTO determined that the relatively rare last name, HACKLER, was not primarily merely a surname. They used a dictionary definition to reach this conclusion. However, this conclusion will not mean that every last name with another meaning will be granted.
The Way The Term Sounds When Said Out Loud
In another type of case of last names, the USPTO will evaluate the use of the last name with the way it sounds. In one case, an applicant attempted to register the term “PICKETT SUITE HOTEL” with the USPTO. However, the USPTO found that even though “PICKETT” sounded like the word “picket,” the word “PICKETT” in this application was still primarily merely a surname.
Geographical Significance
Applicants might have better luck if their last name also has a well-known geographical meaning. In one case, the USPTO found that the term “FAIRBANKS” was not primarily merely a surname. They came to this conclusion because the geographical significance of “FAIRBANKS” was just as strong as the surname significance.
Historical Person or Place
Applicants can also submit applications for surnames if the term also indicates a historical place or person. One case found that the applicant could register the term “SOUSA.” They used evidence that shows that the public recognizes the continuing fame of the composer of patriotic music, John Philip Sousa to be strong.
Rare Last Names
If a surname is extremely rare, the USPTO will likely use the rareness as a factor in its evaluation. For example, the USPTO found that the last name, “BAIK,” to be scarce, thus constituting a refusal for the mark.
However, in another case, the USPTO found that the mark, “SAVA”:
- did not have a primary meaning as a surname;
- the evidence shows that “SAVA” has other meanings;
- there was no evidence that the term was connected to the applicant; and
- the term’s use as a last name was infrequent.
The USPTO weighed all of these factors in favor of granting the application.
“Look and Feel” of a Last Name
In some cases, the USPTO will view a rare last name as not having the “look and feel” of a surname and grant the application. However, in other cases, the USPTO will view the rare surname as having a “look and feel” of a surname and reject the application. This was the case in determining that “PIRELLI” primarily had the “look and feel” of a surname. Therefore, the USPTO rejected the application.
Foreign Equivalents
As mentioned above, with the “FIORE” case, the USPTO will evaluate if the surname has any meaning in a foreign language. This is a guideline rather than a rule. However, the USPTO will view this guideline from the perspective of the American purchaser. The USPTO must show that the primary understanding or significance of the mark is the last name itself rather than the translation.
Combining The Last Name With An Additional Matter
If you attempt to register a trademark comprised of a last name and additional terms, the USPTO will evaluate the mark as a whole. They will either grant or reject your application based on whether the public would perceive the term as a whole as a surname or something else.
If you add initials to the surname, then the USPTO will likely rule that the commercial impression on the public is that it is a personal name rather than a surname.
How will the USPTO evaluate whether or not my surname has acquired distinctiveness?
The cases described above show the various factors that the USPTO will look at when determining whether or not to grant your trademark.
To briefly summarize, the USPTO will use the following factors:
- Whether or not your last name is rare.
- If the term in the mark is the applicant’s actual last name.
- Does the public recognize the mark as having any other meaning other than just the last name?
- Whether the mark has the “look and feel” of a last name.
- Is the stylization or the mark’s design distinctive enough “to create a separate commercial impression.” TMEP § 1211?
What actions can you take if you receive a surname refusal?
If you received an Office Action refusing your mark because the USPTO considers the mark to contain a surname, you could take various steps to overcome that refusal.
First, you can submit evidence to prove that your mark is not primarily merely a surname. You can show that the mark has some acquired distinctiveness beyond just being a last name. If you have any active prior registrations on the Principal Register, you can present that as evidence.
Next, you can also submit an affidavit that you have been using the mark for at least five years and continue to use the mark in commerce. In that scenario, the use for more than five years would prove that the mark does have acquired distinctiveness.
Other evidence you can submit to the USPTO includes:
- Advertisements
- Consumer surveys and studies recognizing your mark
- Media Coverage
- Sales Reports with the mark
- Length of Use
- Exclusivity of Use
Finally, you can also amend your application to attempt to register it on the Supplemental Register. The Supplemental Register provides marks protections that are non-distinctive marks but are capable of acquiring distinctiveness.
An experienced trademark attorney can help you compile all of the evidence you might need as well as respond to the UPSTO’s Office Action. Schedule a free consultation to learn about how we can help you protect your brand.
