Last Name as a Trademark: A Surname Must Mean More Than Just YOU
A surname or last-name of a person will only be granted the protection of registration on the Federal trademark register if it has acquired some significance to the public as a whole. The proposed term cannot be primarily a surname.
In other words, the word proposed for trademark protection must mean something to consumers.
Detroit Trademark Attorneys: 5 Factors Considered with Surname Trademark Applications
The US Patent and Trademark Office’s (USPTO’s) Trademark and Trial Appeal Board (TTAB) decides whether or not a proposed term has acquired its own, stand-alone significance to consumers based on its own facts.
However, there are 5 factors that the TTAB reviews for evidence that a proposed term either is or isn’t “primarily a surname.”
These factors are:
- Whether the surname is rare;
- Whether the term is the surname of anyone connected with the applicant;
- Whether the term has any recognized meaning other than as a surname;
- Whether it has the “structure and pronunciation” of a surname;
- Whether the stylization of lettering is distinctive enough to create a separate commercial impression.
These factors are not exhaustive, and any of them, alone or in combination with one another, may drive the line of questioning.
Detroit Trademark Attorneys: The 5 Factors Explained
A surname that is so rare that it is unlikely to be perceived by the public as a surname may be acceptable to the USPTO and the TTAB. Remembering that the test is whether the purchasing public would perceive the term as “primarily a surname,” a last name that is quite unusual may be acceptable as it would be perceived by the public as a fanciful word.
An exception would be where the unusual surname is that of a celebrity whose name has been broadly and widely exposed to the public as that individual’s own name.
A surname connected with the applicant is likely to be refused as it simply is a surname and, further, may be merely descriptive, depending.
If a surname has ordinary language meaning, is the phonetic equivalent of a term with ordinary language meaning, implies a place of geographic significance or a person of historical significance, or has an ordinary meaning when translated from a foreign language, it may be found acceptable.
The “structure and pronunciation of a surname” factor takes aim at certain names that, despite rarity, just plan look and sound like a surname. The USPTO examiner will, in this situation, look at the actual structure of the name to determine whether other names have that same structure.
The stylization of lettering factor will not be examined when the term is in standard characters. However, when this issue is reviewed, the question will be whether the stylization of the letters themselves somehow would lead the public to perceive that the term is not merely a surname.
The Bottom Line with Regard to the Trademark Registration of Last Names
The bottom line here is that, as ever, it is important to keep in mind that the purpose of trademark registration in the US is to protect consumers, not to protect the “art” or “creation” of the trademark owner or registrant.
Trademark is different from copyright or patent law in that way. The USPTO is tasked with ensuring that a registered trademark does not cause any consumer confusion and that consumers purchasing a good or service understand the source of that product.
Thus, a surname is inherently likely to cause consumer confusion, except where the above factors and others (there are many) mitigate the possibility.
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