Key Takeaways

  • A surname can qualify as a trademark if it has developed a secondary meaning tied to specific goods or services.
  • Courts evaluate surname trademarks based on distinctiveness, consumer association, and likelihood of confusion.
  • Modern trademark law has evolved from allowing unrestricted surname use to emphasizing consumer protection and brand clarity.
  • Using a trademark last name can strengthen a brand but also increase the risk of infringement disputes, especially when the surname is common.
  • Businesses should perform comprehensive trademark searches and consider alternative branding strategies before applying.
  • Family-owned companies often face unique challenges balancing heritage branding and legal exclusivity.

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.

Understanding the Legal Standards for Surname Trademarks

Under U.S. trademark law, a surname cannot be registered simply because it is someone’s family name. Instead, it must achieve secondary meaning, meaning consumers recognize the name as identifying the source of specific goods or services rather than the person bearing the name. The U.S. Patent and Trademark Office (USPTO) will generally refuse registration on the Principal Register unless evidence shows that the surname has acquired distinctiveness through long-term commercial use, significant marketing, or established reputation in the marketplace.

Courts and the USPTO consider several key factors:

  • Rarity of the surname: Common surnames face greater scrutiny.
  • Connection to the applicant: If the name directly identifies the applicant, it is more likely to be viewed as a surname.
  • Other meanings: If the name has non-surname meanings (e.g., “Baker” for bread), it may be registrable.
  • Public recognition: The extent to which the name has become synonymous with a business or product.

This framework ensures that surname trademarks balance individual rights with consumer protection, preventing marketplace confusion.

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.

Evolution of the “Personal Name Rule”

Historically, courts upheld the “personal name rule,” allowing individuals the right to use their own last names in business even if another company already had a similar trademark. For example, early 20th-century courts viewed the use of one’s name as an inalienable right tied to personal identity. However, modern trademark law has moved away from this principle.

Today, the law prioritizes consumer clarity and brand reputation over personal rights. If a surname’s use is likely to confuse consumers—such as implying a connection to an existing, well-known company—courts may restrict its commercial use. This shift was illustrated in Walgreen Co. v. Walgreen Health Solutions, where the court found that the long-standing WALGREENS® mark had developed strong distinctiveness and secondary meaning, preventing another business—even one using the same family name—from registering or using a similar name in commerce.

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.

Challenges of Trademarking a Last Name

Trademarking a last name often poses challenges because surnames are typically considered descriptive of personal identity rather than of goods or services. Common pitfalls include:

  • Difficulty proving secondary meaning: Establishing that consumers associate the name with your business takes time and evidence.
  • Potential legal opposition: Established companies with similar surname trademarks may file oppositions or infringement claims.
  • Loss of flexibility: Once registered, others—including family members—may face limits using the same name commercially.

Courts have become increasingly strict in applying the likelihood of confusion standard. If consumers could mistakenly associate your brand with an existing trademark last name, registration is unlikely. The USPTO may also place the name on the Supplemental Register if it lacks distinctiveness but could later acquire it through use.

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.

Strategies to Strengthen a Surname Trademark

While challenging, securing a surname trademark can offer strong brand protection if approached strategically. Business owners can improve their odds by:

  • Combining the surname with other distinctive words (e.g., “Anderson Logistics” instead of “Anderson”).
  • Using stylized logos or unique fonts to create distinctiveness.
  • Gathering evidence of use, such as advertising materials, press coverage, or sales figures demonstrating consumer association.
  • Registering early to prevent competitors from establishing conflicting marks.

Family businesses, in particular, may benefit from trademark protection to preserve their legacy and reputation, ensuring continuity across generations. However, applicants should weigh this benefit against the legal complexity and potential disputes over shared surname rights.

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.

Case Insights — Lessons from Trademark Battles

Recent disputes underscore the risks of trademarking a last name without sufficient distinctiveness. In the Walgreen Co. v. Walgreen Health Solutions case, the court sided with the older, established brand, emphasizing that heritage does not override consumer confusion. Similarly, nonprofits and family-owned entities have faced disputes when names evoke existing brands, leading to rebranding costs and loss of goodwill.

By contrast, companies that choose distinctive brand names unrelated to their founders’ surnames—such as Apple, Amazon, or Nike—avoid these pitfalls and enjoy stronger, easier-to-defend trademark rights. The lesson: using a surname may seem authentic, but a more creative or distinctive mark can provide broader protection and market flexibility.

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

Best Practices Before Filing a Surname Trademark

Before applying for a surname trademark, business owners should take these steps:

  1. Conduct a comprehensive trademark search using USPTO and global databases to ensure no conflicts.
  2. Evaluate the name’s distinctiveness—is it rare, stylized, or already associated with your goods/services?
  3. Consider branding alternatives if the surname is too common or already protected.
  4. Consult a trademark attorney to assess eligibility and evidence of secondary meaning.
  5. Document your use—collect marketing materials, invoices, and public references linking the name to your business.

Following these practices can save significant legal expense and prevent rejection or future infringement litigation. Business owners can connect with experienced trademark attorneys on UpCounsel for help navigating the complex surname trademark process.

Frequently Asked Questions

  1. Can I trademark my last name for a business?
    Yes, but only if it has acquired distinctiveness and consumers associate it with your goods or services rather than your identity alone.
  2. What is secondary meaning in trademark law?
    Secondary meaning occurs when the public identifies a descriptive or surname mark with a single business source over time.
  3. Can two people with the same surname both register trademarks?
    Possibly, if their industries differ or if there’s no likelihood of consumer confusion between the two.
  4. How can I make my surname trademark more distinctive?
    Combine it with unique terms, symbols, or designs, and promote it consistently to build recognition.
  5. What happens if my surname conflicts with an existing brand?
    You may need to rebrand or modify your trademark. Courts prioritize avoiding consumer confusion over individual surname rights.

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