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

SCOPE OUT THE COMPETITION
This is important for at least two reasons. One, you don’t want to be on the receiving end of a trademark suit. (You should also trademark your logo.) And two, you want your logo to be distinguishable from those of similar businesses. Your logo should be exactly that: yours. Of course, some companies choose to piggyback off the success of their competitors by creating similar logos, but it’s better to branch off. You should not, however, shy away from adopting elements you like. Just make yours better.

Chances are if you talk to your trademark attorney and tell him or her that you want to trademark your logo, you’ll have to endure a brief lecture about how the word “trademark” is not a verb.  The lawyer doesn’t do this to be a scold or to sound officious, but does it to help explain what exactly a trademark is.  A trademark or a service mark is a word, a graphic or a symbol that identifies the source of a product or service as separate from other sources.  A product has trademark protection once that product is delivered or used in the marketplace and consumers associate a identifying mark with that product.  It’s the use of a logo that confers trademark status, not the legal registration process.  For example, if you’re starting a sneaker company and you decide to put three vertical stripes on the sneakers to identify them as coming from your company and not Converse, the logo is not a trademark until the shoes are sold and customers recognize the stripes on the shoes as coming from Adidas.  Registering the logo, either at the state level or federally, provides additional enforcement benefits, but the registration alone doesn’t make the logo a trademark.  That’s why a logo or other mark may have the symbol ™ for unregistered trademarks or ® for registered trademarks.  Neither confer trademark status, but the trademark symbols are notification that the logo is a trademark.

So if you want to skip the lecture, ask your lawyer instead if the logo can function as a trademark, whether it’s federally registerable, or if it’s available.

Shoup’s company, Great Chefs Television, does indeed have a registered trademark of GREAT CHEFS on the Patent and Trademark Office’s Principal Register, which serves as constructive notice to all those who might use the same mark.  Shoup’s allegations of Madoff’s moral failings, however, are excessive in light of the the fact that an author ordinarily might not believe that the use of “Great Chefs” in a cookbook title would be trademark infringement.  Here’s why:

1.  Titles of books (and movies) generally aren’t eligible for trademark protection. For example, I received The Bridge of Sighs for my birthday, by Olen Steinhauer, which is an Eastern European murder mystery.  For Christmas, I gave my wife Bridge of Sighs, a novel by Richard Russo (of Empire Falls fame).  In both instances, the title identifies the book and does not indicate the source of the book, which is the function of a trademark.  (Also, Bridge of Sighs refers to a geographic landmark in Venice and geographic marks are also not inherently registrable).  There is no trademark problem here because a consumer will not believe that the title Bridge of Sighs refers to either the publisher or the author.

There is an exception to this rule, however.  When a mark is used for a series of titles, or for more than one product, like a cookbook and television show, the term can be an identifier of the producer of the multiple works, and thus eligible for trademark protection.

2.  Merely descriptive marks are not inherently registrable. These are marks that just describe the underlying product.  So the first TV show produced by Great Chefs Television was Great Chefs of New Orleans, which describes a cooking show that features great chefs of New Orleans.  Descriptive marks must acquire secondary meaning, some demonstration that consumers associate the mark with a particular source, before it can become a registered trademark.  (One can imagine that Madoff, her co-authors and publisher saw that they had a collection of kosher recipes from some of the great chefs of America and decided to title the cookbook, well, Great Chefs of America Cook Kosher, and didn’t think that their descriptive title could be trademark infringement).

To establish secondary meaning the applicant must show that the primary meaning of the mark is not the product, but the source.  There are three ways to establish secondary meaning for the trademark examiner at the Patent and Trademark Office:

1.    A prior registration of the same mark in the Principal Register;
2.    A statement by the applicant that the mark has become distinctive of the applicant’s goods or services through exclusive and continuous use in commerce for the previous five years;
3.    Actual evidence of acquired distinctiveness regardless of how long the mark has been used.

The application was started in April of 1983 and then granted in February of 1985.   Great Chefs Television didn’t already have GREAT CHEFS on the Principal Register (television show titles are registrable) and the cooking show and companion cookbooks had been in existence less than five years when the trademark was granted, so there must have been actual evidence of acquired distinctiveness.  What could that have been?  How about a television show on PBS, in an era before the Food Network and its shows like Iron Chef and Bravo’s Top Chefs, where a cooking show on public TV could indeed stand out and be well-known.