A trademark that is primarily merely a surname is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has acquired distinctiveness or “secondary meaning” in the minds of the purchasing public. A “surname” is also often referred to as a “last name” or “family name.” Some very common examples of surnames include “Smith,” “Johnson,” “Williams,” and “Jones.” However, there are millions of other surnames among the US population, many of which are shared by only a handful of people. As such, it’s not always clear when a trademark would be considered primarily merely a surname.
Is My Trademark Primarily Merely a Surname?
How do you know if a trademark is primarily merely a surname? Well, you have to evaluate the impact the mark would have on the purchasing public. If the primary significance of the mark to the public is surname significance, then the USPTO will deem the mark to be primarily merely a surname.
The USPTO makes the following inquiries in order to determine whether the public perception of a particular term would be that of a surname:
- Whether the surname is rare
- Whether the term is the surname of anyone connected with the owner of the mark
- Whether the term has any recognized meaning other than as a surname
- Whether the term has the structure and pronunciation of a surname
If the USPTO concludes that a trademark is primarily merely a surname, it’s obligated to refuse registration of the trademark on the Principal Register. So, if you file a trademark application seeking to register a mark that’s primarily merely a surname, the USPTO will issue a trademark office action explaining why it believes your mark is primarily merely a surname and will provide documentary evidence supporting its position.
Here are a Few Examples
The following examples illustrate the difference between trademarks that are primarily merely surnames and those that aren’t. Let’s say there are four individuals named Joe Smith, Stephanie Smith, Kevin Smith, and Evan Smith. All four of these people are skilled and talented house painters who happen use the surname “Smith” as part of their business name.
Joe decides to file a trademark application seeking to register the mark SMITH for painting services. Without question, the USPTO will refuse registration of Joe’s trademark on the Principal Register because “Smith” is an extremely common surname and because “Smith” is the surname of the owner of the trademark. Poor Joe.
Stephanie decides to file an application for SMITH HOUSE PAINTING for painting services. Although Stephanie’s trademark is different from Joe’s trademark in that Stephanie’s mark includes the words “HOUSE PAINTING,” the USPTO will similarly refuse registration of Stephanie’s mark on the Principal Register because the phrase “house painting” is just generic wording that doesn’t alter the primary significance of the mark as a whole to the purchasing public (i.e. house painting provided by a person with the last name of “Smith”). Poor Stephanie.
Kevin files an application for SMITH HIGH QUALITY HOUSE PAINTING for painting services. Guess what? The USPTO will also refuse registration of Kevin’s mark on the Principal Register because the phrase “high quality house painting” is merely descriptive wording that fails to alter the primary significance of the mark as a whole to the purchasing public (i.e. superior house painting provided by a person with the last name of “Smith”). Poor Kevin.
Finally, Evan files an application seeking to register the trademark SMITH HEAVENLY HOUSE PAINTING for painting services. The USPTO approves Evan’s mark for registration on the Principal Register! Why? Because Evan’s mark as a whole is not primarily merely a surname. The word “HEAVENLY” in Evan’s mark is distinctive, or in other words, not generic or merely descriptive of Evan’s painting services. So even though Evan’s trademark does feature a surname, Evan’s trademark is not primarily merely a surname. Congratulations to Evan!
How Do I Overcome a Surname Rejection?
If the trademark examining attorney refuses registration of your trademark on the basis that it’s primarily merely a surname, you can take three different approaches to attempt to overcome the rejection:
- If you believe that your trademark isn’t primarily merely a surname, you may submit evidence and arguments to try to convince the examining attorney to withdraw the rejection. If the examining attorney finds your arguments persuasive, your application will be approved and your trademark will be published for opposition.
- If your trademark has been in substantially continuous use in commerce for at least the past five years, you can add a claim of acquired distinctiveness to your application. If the examining attorney accepts your claim of acquired distinctiveness, your application will be approved and your mark will be published for opposition.
- You may amend your trademark application to seek registration of your mark on the Supplemental Register. However, a trademark application filed on an intent-to-use basis isn’t eligible for conversion to the Supplemental Register until an acceptable Amendment to Allege Use is filed.
Wondering Whether Your Trademark is Primarily a Surname?
I’m US trademark attorney Morris Turek. If you’re wondering whether the USPTO would consider your trademark to be primarily merely a surname, or if you’ve received an office action indicating that your trademark is being refused registration on the basis that it’s a surname, please don’t hesitate to contact me for your free and confidential consultation. You can send an email to email@example.com, give me a call at (314) 749-4059, or simply submit the contact form found at the bottom of this page. I look forward to speaking with you soon.