1. Is the surname rare? These days at the Patent & Trademark Office (PTO), we’re talking very rare–like a steak that has been kissed by heat for just a few seconds. Recently, an examiner found 300 instances of the surname MERIWETHER, which was not considered rare. But for the name YELEY, the PTO considered 147 instances of that name in a national directory rare.
2. Is the mark the applicant’s¹ last name? Obviously, if the proposed mark is your own last name, this is strong evidence that the mark is “primarily merely a surname.”
3. Does the mark have any commonly recognized meaning besides that of a surname? Marks like KNIGHT, OUTLAW or LOVE could be considered by the PTO as having a non-surname meaning. For the mark J.J. YELEY, the PTO concluded that the mark had significance as an identifier for the race car driver and not as a surname.
4. Does the mark look and sound like a mark?² If the applicant can convincingly argue that the mark sounds and looks like something other than a surname, then the mark may be OK for registration.

With any multi-factor test, the determination can be subjective. The bottom line is that registering surnames can be challenging, so be prepared for a surname application to be refused by the PTO.

Why does this rule exist? Many people may share a last name and it was not considered desirable to take away someone’s right to use their surname for commercial activities by having granted an exclusive trademark right to someone else. (Photo of Travis Outlaw by Keith Allison used under a Creative Commons license.)

1. Actually, anyone with the last name connected with the applicant
2. Yes, this is an awful lot like the quacks like a duck, swims like a duck, looks like a duck, it must be a duck inductive reasoning test

1. According to the registration certificates, Gosling’s has a trademark registration for the mark DARK N’ STORMY for use with Gosling’s Black Seal rum and ginger ale, a pre-mixed alcoholic drink featuring rum and ginger beer, and clothing merchandise.  Gosling does not have the right to prevent a bartender from making a drink featuring rum and ginger ale together, but can assert a right for that drink to not be named a DARK N’ STORMY on the menu without using Gosling’s Black Seal rum. What if a patron asks for a DARK N’ STORMY and is then served with a non-Gosling’s dark rum and ginger ale drink? The safe bet is to respond that the bar doesn’t have Gosling’s and thus can’t serve a DARK N’ STORMY, but can make a dark rum and ginger ale drink.
2. Contrary to what the Times article says, the registration certificates do not mention ingredient amounts, proportions or any requirement that other ingredients must be excluded.  Presumably, Gosling is asserting an implied, non-exclusive license for restaurants and bars using the mark DARK N’ STORMY, and that a condition of the license is that the drink adhere to the proper recipe.
3. A bartender interviewed in the article remarks that she didn’t know about the trademark and proposes as a solution to her using a splash of lime juice (a lime wedge is allowed, but not juice) to print on the menu an ampersand as a replacement for the “n’”. That’s not going to work. It won’t pass the sight, sound and meaning analysis used to determine the similarity of a mark as part of a likelihood of confusion test.
4. Gosling does not have the right to stop the Bulwer-Lytton Dark and Stormy Night fiction contest. And speaking of the Bulwar-Lytton contest, I like this Runner-Up entry in the Fantasy Fiction category by Andrew Manoske of Foster City, California: “Towards the dragon’s lair the fellowship marched — a noble human prince, a fair elf, a surly dwarf, and a disheveled copyright attorney who was frantically trying to find a way to differentiate this story from ‘Lord of the Rings.’”

(Dark n’ Stormy image by star5112 used under a Creative Commons license.)