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.