When a Trademark is Primarily Merely a Surname

Jordon Trapnell guest writes:

Trademark law states that any mark that is predominantly a last name cannot be registered as a federal trademark on the Principal Register.  The law identifies such a name as “primarily merely” a surname, meaning the primary – not the secondary – meaning to the public is that of a name.  In contrast, names like “Cotton” or “King” function as surnames but also have separate, more prominent meanings as words in everyday language, and thus are not considered primarily merely surnames.  However, the line between “primarily merely a surname” and not can be a difficult one to find.

The law regarding what is and isn’t a surname was originally intended to exclude registration of common names like “Jones” and “Johnson,” but it has morphed through the years in cases and statutes.  The touchstone of the modern analysis, however, is determining the primary significance of the term to the public.

The Trademark Trial and Appeal Board (TTAB) has now established five factors for making that determination.  Those factors include: 1) whether the surname is rare; 2) whether the term is the name of anyone connected with the applicant; 3) whether the term has any other recognized meanings; 4) whether the term has the look and feel of a surname; and 5) whether the stylization of the lettering is distinctive enough to create a commercial impression separate from the term itself.  The factors are considered together; it is possible for one factor to be given greater weight or for other factors to be minimized.

A surname that is rare, bears no connection to the application, and carries other meanings would likely have a good chance of successful registration on the Principal Register.  Further, there are ways that a surname that doesn’t pass the five-factor analysis could still be registered.  Marks that have historical significance (such as DA VINCI or SOUSA) can be registered.  However, other marks fail the historical-significance test (BINION’S has been denied registration because the applicant’s role in developing gaming in Las Vegas was considered insufficient to raise him to the level of a historical figure).

Acquired distinctiveness can also allow registration of a surname, which may be how companies like Gibson or Ford came to register their trademarks.  By the time those companies applied for a trademark, the public already recognized “Gibson” or “Ford” as having significance to certain products.

The determination is often extremely subjective, and can thus be very difficult to predict.  Suitably, in 1988, the TTAB decided PIRELLI was primarily a surname with an explanation that included: “certain rare surnames look like surnames and certain rare surnames do not and … ‘PIRELLI’ falls into the former category…” (1).

Regardless of the intricacies of what is and is not considered a name, the surname rule is a useful tool for looking at how trademarks are supposed to function.  The most basic purpose of a trademark is to identify the source of a product and distinguish it from the products of others.  Invented marks like XEROX are often the strongest type of trademark because there can be very little confusion regarding to whom the mark is referring.  Surnames do not serve this purpose as  well since they can be connected to any number of different sources.  As surnames can be shared across many unrelated families, the registration of a mark that functions primarily merely as a surname might unfairly prevent someone else with the same name from using it in their business.