Under Section 2(e)4 of the Trademark Act a mark that is primarily merely a surname can not be registered on the Principal Register absent a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. See Suisman, Shapiro, Wool, Brennan, Gray & Greenberg P.C. v. Suisman, 80 U.S.P.Q.2d 1072, 2006 WL 387289 (D. Conn. 2006), where the law firm’s name developed secondary meaning and was protectable as a trademark. The reasoning behind the refusal rule for surnames is that the law recognizes that many may share the same last name, and each of whom may have an interest in using their last name as a brand.
See our blog post entitled, Can You Use A Surname (Last Name) As A Trademark? for the five factor test used by the Trademark Trial and Appeal Board (TTAB or Board) for making this determination. A mark that is primarily merely a surname may be registered on the Supplemental Register in an application under Section 1 or Section 44 of the Trademark Act. To avoid the Supplemental Trademark Register, a trademark applicant with a mark containing a surname should consider several options. For more details on the Supplemental Register, see our web page entitled, A Comprehensive Overview Of The Supplemental Register. The Supplemental Register offers only a few benefits of federal trademark registration and it is reserved for descriptive marks.
A combination of two surnames is not primarily merely a surname within the meaning of §2(e)(4), unless evidence is presented showing that the combination would be perceived by the public as merely a surname. See Application of Standard Elektrik Lorenz Aktiengesellschaft, 54 C.C.P.A. 1043, 371 F.2d 870, 152 U.S. P.Q. 563 (1967), where it was held that the proposed mark SCHAUB-LORENZ was not primarily merely a surname. The Court noted that there was no evidence submitted that the mark as a whole was merely a surname. Some evidence was put forth to demonstrate that the individual terms “SCHAUB” and “LORENZ” had surname significance, but the Court insisted that the mark be considered as a whole and not dissected.
Another creative way to avoid registration on the Supplemental Register when a mark contains a surname is to add a distinctive design element to the trademark. See In re Benthin Management Gmbh, 37 U.S.P.Q.2d 1332, 1995 WL 789509 (TTAB 1995), where a stylized presentation of the mark BENTHIN was a factor that weighed against finding that the mark was primarily merely a surname. Another option, is to add two or more initials preceding a surname. Typically, this presentation will convey a commercial impression of a personal name and generally will be allowed on the Principal Register. Interestingly, a mark preceded by just one initial is often held to be primarily a surname and refused on the Principal Register.
The Burden is initially on the examining attorney to establish a prima facie case that the trademark is primarily merely a surname. Once the Examiner meets its burden, then the onus shifts to the applicant to rebut the showing. Typical kinds of evidence submitted to make a prima facie showing include telephone directory listings, lexisnexis® research database evidence, U.S. census database evidence, a showing that the subject surname is associated with the applicant, and specimens confirming surname significance of the term.
Finally, to avoid registration on the Supplemental Register, a trademark applicant should consider adding another distinctive term to the surname. However, an applicant should be mindful that adding descriptive or generic terms will not assist in the objective of registration on the Principal Register. For example, if the mark was MORGAN for pharmaceutical products adding the term PHARMACEUTICALS to the mark would not remove the trademark from being considered primarily merely a surname.
One more important consideration when registering a mark consisting of a surname is to keep in mind that your mark could also be refused based on a likelihood of confusion with a prior pending application or registration containing a similar term for related goods or services. It is critical to conduct a trademark clearance search prior to filing any trademark application at the United States Patent & Trademark Office, including an application seeking registration for a mark that includes a surname. If you require assistance with registration of a mark comprised of a surname or with any proposed mark, please contact our office for a courtesy consultation.