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Can You Use A Surname (Last Name) As A Trademark?

The answer to this question is similar to the answer to many other legal questions, it depends on a number of factors. The central inquiry is what is the primary significance of the term to the purchasing public. Under §2(e)(4), of the Trademark Act, 15 U.S.C. §1052(e)(4) a trademark that is primarily merely a surname cannot register on the Principal Register of the United States Patent & Trademark Office (USPTO) absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f). However, a trademark that is primarily merely a surname can register on the Supplemental Register. In some of my earlier postings, I have discussed some of the types of marks appropriate for the Supplemental Register. These marks include descriptive terms that are capable of acquiring distinctiveness, geographic terms, trade dress that is not functional or distinctive, and certain surnames. See our webpage entitled Filing Your Trademark On The Principal Register And Supplemental Register.

The reasoning behind this rule is that exclusive rights in a surname cannot be established without a showing of a long history of exclusive use so that the meaning to the public changes from that of a surname to that of a trademark for specific goods or services. Public policy recognizes that many people can share the same surname and multiple parties may have an interest in utilizing the name as a brand in business. Therefore, it is fair to ask the party requesting exclusive rights to the surname to demonstrate that the name has acquired secondary meaning.

It is not always easy to ascertain whether a last name is primarily merely a surname and even the experts at the USPTO struggle with this determination. A couple of weeks ago, the Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed a refusal to register a trademark based on finding that the proposed mark was not primarily merely a surname. See In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential]. In that case, the applicant was seeking registration of the mark ROMANOV for decorative eggs, porcelain boxes, jewelry, and picture frames. The Examiner refused the application claiming that the term was primarily merely a surname.

In these types of refusals, the Examiners bear the burden of proving a prima facie case and then the burden shifts to the Applicant to rebut the showing. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).  The TTAB reviews five factors when determining if a name is primarily merely a surname:

(1) Is the surname rare (See Trademark Manual Of Examining Procedure “TMEP” §1211.01(a)(v));

(2) Is the proposed mark the surname of the Applicant or anyone connected with the Applicant;

(3) Does the proposed mark have any recognized meaning other than a surname;

(4) Does the term have the “look and feel” of a surname (See TMEP §1211.01(a)(vi)); and

(5) Is the stylization of the lettering in the proposed mark distinctive enough to create a separate commercial impression.

To support the first factor that the surname was common, the Examining Attorney submitted evidence from the website www.411.com Free Directory Assistance, showing 100+ results for the surname ROMANOV. However, the record did not contain information explaining the numerical significance of 100+ results. Nor was there information in the record regarding the size of the database contained in www.411.com. Therefore, since the Examiner did not meet its burden with respect to the first factor, the Board found in favor of the Applicant on that prong of the test.

Regarding the second factor, there was evidence showing that the proposed mark was not the surname of the Applicant or anyone connected with the Applicant. In connection with the third factor, the Board pointed out the dictionary definition for ROMANOV: the “Russian ruling dynasty (1613-1917) that began with the accession of Czar Michael and ended with the abdication of Nicholas II during the Russian Revolution”. This definition demonstrates that there is significance to the term ROMANOV apart from a surname.

The fourth factor is extraordinarily subjective. The proposed mark must be evaluated for structure and pronunciation. In  addition, one must determine if the proposed trademark has the “look and feel” of a surname. To support its opinion that the term ROMANOV had the look and feel of a surname, the Examining Attorney submitted evidence from the website Familypedia. The website stated that the suffix “ov” is common to Russian surnames and evokes the Russian language. The Board agreed with the Examiner on this factor. Lastly, Factor five was not discussed in the Board’s opinion because the Applicant’s mark was applied for as a standard character mark (without stylization).

In the end, the Board held that the term ROMANOV was a rare surname, not associated with the Applicant and that the purchasing public would perceive the mark as identifying the imperial ruling dynasty of Russia, not an individual with that surname. The TTAB reversed the Examining Attorney’s refusal to register the mark ROMANOV. The lawyers at our firm are familiar with the trademark rules governing surnames and have worked with clients seeking to use names as brands. If you are interested in using a surname or a personal name as a brand, please contact one of our New York trademark attorneys, for a courtesy consultation.