What Does it Mean to Trademark a Surname?

A surname alone only qualifies as a trademark if it has already been associated with the business through advertising and has acquired a secondary meaning. It is also clear why somebody with the McDonald surname could not register a fast food restaurant on the name only.

Why is a Trademark Surname Important?

While it is not possible in every case to register a surname as a trademark, if it has "acquired distinctiveness", the business owner should protect it. The approval or rejection of the trademark request depends on:

  • Whether the surname is rare
  • If it is connected with the person registering it
  • If it has a recognized meaning and association with a type of service
  • How the name sounds in the business world - Using surnames is easier when two names join together, as the trademark surname will be more likely to be unique. Some examples are Smith and Wesson or Johnson & Johnson.
  • The historical significance of the surname - For example, a surname that is rare and associated with a traditional trade has a better chance of being included in the Principal Register than one that is common and has no other connection with the business.

Reasons Not to Use a Trademark Surname

A surname can be a recognizable trademark asset of a company. In some cases, however, it is better to use an alternative trademark that is more popular and easily recognizable. Some business owners want the family surname to stay in their personal realm and separate their business from their home. This means they have to find an alternative to trademarking their surname that's still relevant to the products or services and unique enough for customers to remember.

As it is hard to prove that the surname has acquired distinctiveness, it might be easier for business owners to register a business name instead of a family one as a trademark. The Trademarks Act, 1999, Section 11 details all the information on how to qualify a surname as a trademark.

Trademark infringement suits can start if common surnames are registered by companies with similar profiles, such as in the case of Mitchell Miller, a Professional Corp. d/b/a Miller Law Group, P.C.

Reasons to Use a Trademarked Surname in the Register

According to the Trademark Trial and Appeal Board (TTAB), the five factors that determine which surnames can be trademarked by businesses are as follows:

  • The rarity of the surname
  • Whether the surname is connected with the applicant
  • If it has any other recognized meanings
  • How much it seems like a surname
  • If the stylization creates a distinctive commercial impression

While the trademark law is unclear on the weight of the above factors, and the importance is subject to the decision maker's discretion, it is necessary to submit a trademark surname application in some cases.

If the surname is already commonly associated with the family name, it needs to be protected and trademarked. This allows the owners to create a unique brand persona and strengthen the connection between the company and the family traditions. The main purpose of the trademark is to create a unique and easily recognizable brand. If the surname has acquired distinctiveness and is now associated with the brand or company, it should be trademarked.

Example: The Benefits of Not Using a Trademark Surname

The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office can reject or refuse the application based on the lack of acquired distinctiveness or uniqueness. In 2014, in the case of Barnton Family Winery, the body upheld the refusal to register the trademark, and the company had to find an alternative name. The uncertainty surrounding trademarking a surname makes it a less favorable option for businesses. In this case, the term was weak and did not need enough protection to justify trademark registration, as there were many other alcohol-related companies using the same surname.

One of the main reasons why it is not recommended to use a trademarked surname lies in the purpose of registration. It provides a legal protection for the applicant to associate the name with a product or service and exclude other people from doing so. According to some experts, it is not fair to allow one person to use their surname as a trademark and not others. The decision on trademark surname applications is lengthy and can cost businesses substantially in legal fees.

Common Mistakes

Registering a trademark surname is a costly and lengthy procedure. Companies often make expensive mistakes, including:

  • Failing to check whether the surname is used by other businesses
  • Not having an acquired association between the name and the brand
  • Not consulting with a trademark attorney before submitting the application
  • Accidentally committing trademark infringement

If you need some help to avoid these pitfalls, you can post your questions on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard and Yale Law and average 14 years of legal experience, including work with or for companies like Google, Stripe, and Twilio.

Frequently Asked Questions

  • Is registering trademark surnames prohibited?

No, the Trademark and Merchandise Act does not prohibit or allow the registration of surnames of trademarks. Decisions are made on the case-to-case basis.

  • What are the main criteria for registering trademark surnames?

The United States Patent and Trademark Office considers each case individually, based on the five factors mentioned above, but the weight of each condition is decided by the judge.

  • Do I have a better chance trademarking combined surnames?

Generally, the answer is yes, as they tend to be more unique. However, the trademark needs to comply with other conditions.

  • Who makes a decision on trademark surnames?

The United States Patent and Trademark Office.

  • Where are Trademark Surnames registered?

Trademark surnames are first entered in the Principal Register.

To learn more about trademark surname registration, check out Upcounsel's marketplace to work with trademark experts. You can also click here to post a job to get free custom quotes from the top 5% of business lawyers while saving 60% on legal fees.