A Trademark and its goodwill is a valuable business asset. Therefore, it is crucially important to select the right trademark before spending company resources. For more than 30-years, I have advised domestic and foreign business clients, big and small, on the selection, acquisition, development, commercialization, and protection of trademarks.
For a number of legal reasons, I have been compelled to advise clients to reconsider a prospective business decision to adopt a particular surname as a trademark for their business. Although a surname may function as a trademark under certain circumstances, that decision is more complicated, complex and fraught with potential risks than the uninformed might expect.
First and foremost, under U.S. law a trademark that is “primarily merely a surname” is considered to be non-distinctive, weak, difficult to protect and not eligible for registration on the U.S. Trademark Office Principal Register unless that mark has “acquired distinctiveness” separate and apart from its surname impression in the minds of the consumer public. For example, the U.S. Trademark Office initially denied registration of MCDONALD’S on its Principal Register until the mark had acquired distinctiveness over time and use in interstate commerce and the expenditure of significant marketing resources. It goes without saying that MCDONALD’S is recognized worldwide for the company’s fast food and related services.
The sole purpose of a trademark is to enable the consumer to identify a company as the source of its products or services and to prevent consumer confusion. Within this context, the primary significance of the mark to the consumer public determines whether a term is primarily merely a surname. Both federal courts and the U.S. Trademark Office Trademark Trial and Appeal Board consider the following five non-exclusive factors, singularly or in combination, as-well-as any other relevant circumstances to make this determination. They are:
- The proposed surname is rare. The rarity of a surname is a factor to be considered in determining whether a term is primarily merely a surname. Here, it is important to underscore that even if a surname appears unusual on its face, the Trademark Office has held that the fact that a surname is rare does not per se preclude a finding that a term is primarily merely a surname. Even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.
- The proposed surname is connected with the applicant for registration. The fact that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is evidence of the surname significance of the proposed mark. However, the lack of such an association does not necessarily reduce the likelihood that the mark would be perceived as a surname.
- The proposed mark has meaning other than as a surname. A readily recognized meaning of a mark other than as a surname may be sufficient to render it not merely, primarily a surname. Conversely, the mere existence of other non-surname meanings of a term does not preclude a finding that the term is primarily merely a surname. Again, the issue is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods or services at issue, that non-surname significance is the mark’s primary significance to the purchasing public.”
- The surname has “structure and pronunciation”. Another factor of consideration is whether-or-not a term or terms has or does not have the “structure and pronunciation” of a surname. Put another way, does the term or terms have the “look and feel” of a surname. Evidence of other similarly-configured surnames such that would lead to the conclusion that a particular mark would be perceived by the consumer public as primarily merely a surname.
- Stylization of lettering is distinctive enough to create a separate impression. In some cases, a mark comprised of a word coupled with a distinctive stylization or design element may not be considered primarily merely a surname. However, the mere addition of non distinctive design elements or stylized wording may be insufficient to render the mark anything but merely primarily a surname.
In addition to the forgoing five factors, both the Trademark Trial and Appeal Board recognize that combining a surname with the generic name for the goods or services does not overcome a mark’s surname significance. A case in point is that of In re Hamilton Pharmaceuticals, a case that I successfully argued in 1993 before the Trademark Trial and appeal Board and which remains oft-cited today as precedence in both tribunals. In this case, the Trademark Trial and Appeal Board correctly opined that the additional wording of the term PHARMACEUTICALS did not alter the surname significance of the mark because it identified the generic name for the goods and/or services. The primary significance of the proposed mark in the mind of consumers is that of a surname. The mark, therefore, did not serve as a source identifier of the business services. The Board further added that although the registration applicant demonstrated that HAMILTON has some geographical and given-name significance, the record reflected that it is the surname significance of such term which is far more common and which predominates,
What should be gleaned from this brief article is that each case must be decided on its own facts, that there are no firm, hard and fast rules of guidance, and that the availability of a particular proposed trademark must be based upon an expert and well-reasoned opinion. Accordingly, it is highly recommended that any business obtain the advice of an attorney with significant experience in trademark law. To schedule an initial consultation to discuss your trademark and answer your questions, please contact my office.