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 See In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential].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.