surnames

Can you get trademark registration for a surname? The answer is no. There are exceptions. The rule is that the trademark examiner will refuse an application for word marks that are “primarily merely a surname.” That’s language that only a lawyer could love. But what “primarily merely a surname” means is that if a trademark registration applicant can demonstrate that a surname has a meaning or significance greater than its sound and look as a surname, the surname may be registrable. The trademark examiner will consider a number of questions about the mark to determine if the applied for mark is “primarily merely a surname”:

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 [↩]