A common mistake that brand owners do is naming their business by their last name. For example, Smith Fashions for a clothing brand, or Smith Widgets for selling widgets. The problem arises when a brand owner has expanded significant advertising revenues to develop the brand, and decides to register it with the United States Patent and Trademark Office (USPTO). The application ultimately results in a denial, to the great surprise and deception of the applicant.
The USPTO has a rule called “primarily merely a surname” which bars the registration of trademarks that consist of a last name. The issue is whether the word itself sounds like a last name. The test for determining whether a mark is “primarily merely a surname” depends on the primary significance of the mark as a whole to the purchasing public. If the primary significance of the word is understood to be a last name, then the bar applies, and the registration will be denied. Hence the name of the rule.
There are several factors that the trademark examiner will evaluate in determining whether the word is “primarily merely a surname”: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the structure and pronunciation of a surname (sounds a whole lot like a surname, but is not a common one); and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.
The fact that the last name is combined with another term could potentially take it out of the rule, but that needs to be determined on a case by case basis. For example, consider the examples above that contain a last name, but are combined with a descriptive term. This would be problematic as the USPTO would disregard the descriptive term and only examine the last name.
But there are ways to avoid the rule. For example, by combining the last name with initials, or a first name, or using some significant design elements. You can also overcome the rule by showing that a brand is famous, and that it has acquired secondary meaning. In other words, that the public recognizes the brand as coming from a particular source. This can be challenging and the subject matter deserves another blog entry.
Some examples of the rule and its application are included below. So the next time you are considering using a last name, whether it is yours, or that of someone else, perhaps give it a second thought.
In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005) (holding FIORE not primarily merely a surname where it is also the Italian translation of the English word "flower" and the non-surname meaning is not obscure); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (holding the relatively rare surname HACKLER not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969) (holding BIRD not primarily merely a surname despite surname significance); In re Hunt Elecs. Co., 155 USPQ 606 (TTAB 1967) (holding HUNT not primarily merely a surname despite surname significance); In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite applicant’s argument that PICKETT is the phonetic equivalent of the word "picket"); cf. In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (holding CALISTO not primarily merely a surname, the Board characterizing the telephone directory evidence of surname significance as "minimal" and in noting the mythological significance of the name "Callisto," stating that it is common knowledge that there are variations in the rendering of mythological names transliterated from the Greek alphabet (distinguishing Pickett Hotel Co., 229 USPQ 760)); In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1924 (TTAB 2007) (finding the extreme rarity of BAIK weighed against surname refusal); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995) (finding the fact that BENTHIN was a rare surname to be a factor weighing against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994) (finding SAVA not primarily merely a surname, where there was evidence that the term had other meaning, no evidence that the term was the surname of anyone connected with applicant, and the term’s use as a surname was very rare); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) (holding GARAN not primarily merely a surname); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (holding PIRELLI primarily merely a surname, the Board stated that "certain rare surnames look like surnames and certain rare surnames do not and . . . ‘PIRELLI’ falls into the former category . . . ."); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (holding PETRIN primarily merely a surname).