Trademark Office Action: Merely a Surname

Many family businesses carry the family name. The family name comes to serve as a symbol of trust and recognition. But can you obtain federal trademark registration of your family name?

Many businesses that apply for trademark registration will receive an Office Action refusing to register a mark because it is “merely a surname” under Section 2(e)(4) of the Lanham Act.

The Five Factor Test for Trademark Registration of Surnames

When determining whether a mark should be refused registration as merely a surname, five factors are applied:

• Whether the surname is rare;
• Whether anyone connected with the applicant uses the term as a surname;
• Whether the terms has any recognized meaning other than as a surname;
• Whether the term has the structure and pronunciation of a surname; and,
• Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009).

How Should Applicants Respond to an Office Action Refusing to Register Based on a Surname?

The applicant should take measures to argue the surname is rare. While it is not a hard and fast rule, it is likely the more rare the name the better your odds of beating the office action. The examining attorney will likely present some evidence of the number of people that have that surname. It is important to test the evidence presented and question its accuracy, content, and any conclusions derived from it.

Further, the applicant should confirm the examining attorney has found all other recognized meanings of the word. This means the applicant should consider dictionary definitions to determine any alternative meanings.

Finally, the applicant should use any and all available evidence to argue the public does not view the mark as a surname, but rather, as a source indicator for the good or services provided.

Do Any Other Options Exist?

Depending on how long you have used the mark in question, you may qualify for registration under Section 2(f) of the Lanham Act.

As you can see, obtaining relevant and persuasive evidence to properly respond to an Office Action based on a surname refusal can be complex. To retain Revision Legal’s experience trademark attorneys to respond on your behalf, simply complete the contact forms on the website or call 855-473-8474.

Why Section 2(e)(4) Exists: The Policy Rationale

Congress enacted the surname bar in Section 2(e)(4) of the Lanham Act for the same reason it bars registration of purely descriptive terms: it would be inequitable to permit one person to monopolize a surname and exclude every other person bearing that name from using it in commerce. The USPTO’s examining attorneys implement this policy by refusing to register marks that the relevant public would primarily perceive as a surname rather than as a source identifier for a particular business.

The key word is “primarily.” A surname does not automatically fail the trademark test. The question is whether the primary significance of the term in the minds of the purchasing public is that of a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 16 (Fed. Cir. 1985). If the term has strong non-surname meanings, or if the relevant public would not encounter it primarily as a surname, the refusal may be overcome without resort to Section 2(f).

What Evidence Does the Examining Attorney Use?

When an examining attorney issues a merely-a-surname refusal, the Office Action will typically be accompanied by evidence supporting the finding. This evidence commonly includes:

• Surname frequency data: The examining attorney will typically search a database of United States surnames—often the U.S. Census Bureau data or the Lexis/Nexis database—to show how many individuals bear the surname. A term appearing as a surname for more than a few hundred individuals will generally be treated as a surname for purposes of Section 2(e)(4).
• Third-party business name evidence: The examining attorney may present evidence of businesses using the term as a surname-based trade name, demonstrating that the relevant public has been exposed to the term in a surname context.
• Connection to the applicant’s principals: If the applicant or its officers share the surname, this is treated as evidence that the term functions as a surname in connection with the business.

Building a Response: Strategies That Work

Responding effectively to a surname refusal requires a multi-pronged approach:

Challenge the rarity evidence. The examining attorney’s surname frequency data is often derived from sources that are not perfectly reliable. Applicants should scrutinize the data—is it current? Does it accurately reflect individuals with that exact spelling of the name? Does the data account for the fact that census data may conflate similar but distinct surnames? Challenging the reliability of the examining attorney’s data can significantly weaken the rarity factor.

Identify alternative meanings. If the term has an established meaning beyond its surname usage—as a geographic term, a common word in another language, or a term of art in a particular industry—the applicant should marshal dictionary definitions, encyclopedia references, and other evidence demonstrating that the public is likely to encounter the term in non-surname contexts. The Federal Circuit has held that when a term has a well-recognized non-surname meaning, the primary significance of the mark is likely not that of a surname. In re Hutchinson Technology Inc., 852 F.2d 552, 554 (Fed. Cir. 1988).

Demonstrate commercial recognition as a source indicator. If the mark has been in use for a substantial period and has been promoted heavily, evidence of that use and promotion can support an argument that the relevant public perceives the mark as a brand rather than a surname. Consumer declarations, advertising materials, sales figures, and unsolicited media coverage can all be relevant to this showing.

The Section 2(f) Acquired Distinctiveness Path

When arguing against the surname characterization fails, or when an applicant wants to proceed to registration without protracted argument, Section 2(f) of the Lanham Act provides an alternative route. Under Section 2(f), a surname that has been used exclusively and continuously in commerce for five or more years may qualify for registration based on acquired distinctiveness—the principle that through long and extensive use, even a surname can come to function primarily as a source identifier in the minds of consumers.

For marks with five or more years of use, a sworn statement of continuous exclusive use is often sufficient to secure registration under Section 2(f). For marks with fewer than five years of use, the applicant must submit objective evidence of acquired distinctiveness: advertising budgets, sales volumes, consumer declarations, survey evidence, and any other materials demonstrating that consumers associate the mark with the applicant’s goods or services rather than with a surname.

The tradeoff with a Section 2(f) registration is that it can be treated as an acknowledgment that the mark is not inherently distinctive—a concession that may create challenges in subsequent infringement litigation. The decision whether to argue against the surname refusal or accept a Section 2(f) registration should be made with the guidance of experienced trademark counsel. Revision Legal’s attorneys handle surname office actions regularly and can evaluate the best strategy for your specific mark. Contact us at 855-473-8474 or through the contact form on this page.

Stylization and Design Elements as a Strategy

The fifth factor in the surname analysis—whether the term is sufficiently stylized to remove its primary significance from that of a surname—offers one practical tool for overcoming a refusal. If the mark is presented in a distinctive logo design, with unique lettering, stylized typography, or combined with design elements that create a strong overall commercial impression distinct from the word itself, the examining attorney may find that the dominant commercial impression of the mark as a whole is not that of a surname.

This does not mean that any stylization will overcome the refusal. A surname presented in standard block letters with modest formatting changes will not satisfy this factor. The design elements must be sufficiently distinctive and visually dominant to shift the primary impression of the mark away from its surname character. Applicants whose marks are currently in plain word form should evaluate whether investing in a distinctive logo design would strengthen their position before filing or before responding to a surname refusal. The decision involves tradeoffs—a design mark provides narrower protection than a standard character mark—but in cases where the surname is common and the other factors do not strongly favor registration, design distinctiveness may be the most viable path to registration.