Overcoming Trademark Refusals Based on Surnames: Strategies and Legal Considerations

DEREK FAHEY, ESQ.

The United States Patent and Trademark Office may refuse a proposed mark when it is “primarily merely a surname” under Section 2(e)(4) of the Lanham Act. Incorporating a surname into a brand can therefore create additional challenges during registration.

Understanding The “Primarily Merely a Surname” Refusal

The USPTO evaluates whether the public would primarily understand the proposed mark as a last name rather than as a source identifier. Surnames are shared by many people, and granting one party exclusive rights may unfairly restrict others from using their own names in commerce.

Relevant considerations include:

• How common or rare the surname is.
• Whether the term has a recognized non-surname meaning.
• Whether the applicant is associated with the surname.
• How the mark is presented or stylized.
• Whether consumers already associate the term with a particular business.

Acquired Distinctiveness

An applicant may overcome the refusal by showing acquired distinctiveness under Section 2(f). Evidence may include longstanding use, substantial sales and advertising, consumer recognition, media coverage, declarations, surveys, or relevant prior registrations.

Alternative Meaning and Rarity

If the term has a commonly understood meaning beyond its use as a surname, the applicant may argue that the public would not primarily perceive it as a last name. Evidence that the surname is rare can also weaken the refusal.

Stylized Marks and Logos

A surname incorporated into a distinctive design may be registrable as a logo even when the plain wording faces difficulty. This approach protects the stylized presentation, although it may not create exclusive rights in the surname by itself.

The Supplemental Register

If the mark does not yet qualify for the Principal Register, the Supplemental Register may provide an interim option. Registration can still offer useful benefits while the mark develops distinctiveness through continued use.

Conclusion

Surname refusals can be difficult, but applicants may respond through evidence of acquired distinctiveness, alternative meaning, rarity, stylization, or use of the Supplemental Register. The best strategy depends on the mark, its history, and how consumers encounter it.