Two TTAB Decisions Pertaining To Surnames With Two Different Results

One of the most frequently asked questions in our trademark practice is, can my last name be used as a trademark? The answer is that it depends on the nature of the surname. In this blog post we will examine an example of when a surname can be used as a trademark and an example of when it would be considered primarily merely a surname. See In re G R  Lane Health Products Limited, Serial No. 85115445 (July 10, 2013) [not precedential]. In this case, the Applicant filed for the mark JAKEMANS for throat lozenges and similar goods in International Class 5 and hard candies in International Class 30. The Examining attorney refused the registration under section 2(e)(4) of the Trademark Act (15 U.S.C. §1052(e)(4)) on the grounds that JAKEMANS is primarily merely a surname.

The first question to ask is when viewing the trademark in relationship to the goods or services, will the purchasing public perceive the term’s primary significance as that of a surname. The Trademark Trial and Appeal Board (the “Board”) has identified five factors to be considered in making this determination:

(1)   Is the surname rare;

(2)   Is the term the surname of anyone connected with the applicant;

(3)   Does the term have recognized meaning other than as a surname;

(4)   Does the term have the look and feel of a surname; and

(5)   Whether the stylization of the lettering is distinctive enough to make a separate commercial impression.

If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). During the prosecution, the Examining Attorney presented evidence to show that the surname was not rare. The Examiner produced evidence showing 87 names in a telephone directory for the term Jakeman. The Board held that 87 names is NOT substantial evidence that Jakemans is a common surname. In fact, the Board determined that Jakemans is a very rare surname in the U.S. See also, In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), where HACKLER was held to be a rare surname despite the 1,295 listings in the telephone directory.

One of the more subjective factors that must be analyzed in this evaluation, is does the mark have the look and feel of a surname. The Examiner produced evidence showing 2,365 individuals with the name Jakemans from a nationwide telephone directory, a third-party registration for JACKMAN (not Jakemans) registered under acquired distinctiveness, and pointed to a famous celebrity (Hugh Jackman) with a similar name of Jackman. The Board held that this was not enough to show JAKESMAN had the look and feel of a surname. Upon consideration of all the evidence, the Board reversed the Examiner’s refusal and held that the relevant purchasing public would not perceive the term JAKEMANS to have the primary significance of a surname.

For a case that produced the opposite result see Mitchell Miller, a professional corporation, dba Miller Law Group, P.C. v. Michele Ballard Miller 105 USPQ2d 1615 (TTAB 2013), where the Board sustained an Opposition challenging the mark MILLER LAW GROUP. The Applicant was disclaiming the terms ‘law group” and applied for legal services in International Class 45. Unlike, the first case discussed, here the Board concluded that the term Miller was not only a common surname, but a common surname for attorneys in the legal profession. Also, cutting against registration in this case was the fact that the Applicant’s last name was Miller, and there was no other recognized meaning of the term.

The Board then considered if the term Miller had the “look and feel of a surname”. There was evidence that showed in the Census of 2000, Miller was the sixth most common surname. Therefore, it can be inferred that consumers have been conditioned to perceive the term Miller primarily as a surname. Lastly, the Applicant uses her full name Michele Ballard Miller, in conjunction with her marketing efforts for the firm name Miller Law Group, drawing further attention to the term as a surname. The Board concluded that the term is primarily merely a surname under Section 2(e)(4) of the Trademark Act. The Applicant attempted to show that the term had acquired distinctiveness under Section 2(f) of the Trademark Act, but was unsuccessful.

These two cases produced very different results. Before filing a trademark application that includes a surname, we recommend consulting with trademark counsel. We would be happy to provide a courtesy consultation to assist in determining whether your surname can function as a trademark. To learn more about trademarks and surnames see our webpage entitled, Can You Use Your Name As A Trademark?