Office Action for Merely a Surname Under Section 2(e)(4)

Trademark Registration

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:

  1. Whether the surname is rare;
  2. Whether anyone connected with the applicant uses the term as a surname;
  3. Whether the terms has any recognized meaning other than as a surname;
  4. Whether the term has the structure and pronunciation of a surname; and,
  5. 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.

Extra, Extra!
Recent Posts

Worrying About SaaS Agreements and Cross-Border Data Transfers

Worrying About SaaS Agreements and Cross-Border Data Transfers

Internet Law

When your business is contemplating a software-as-a-service (“SaaS”) agreement, there are a large number of considerations. An SaaS agreement is, of course, a subscription service where a software package is centrally hosted and accessed by a SaaS company’s customers. Issues to be aware of include: As important as the foregoing issues are, one often overlooked […]

Read more about Worrying About SaaS Agreements and Cross-Border Data Transfers

FAQs About Legal Services for Social Media Influencers, Bloggers, and Online Content Creators

FAQs About Legal Services for Social Media Influencers, Bloggers, and Online Content Creators

Internet Law

If you are serious about your career as a social media influencer, blogger, and/or online content creator, you ARE going to need legal services at some point. Online creation is big business now, and big business means the need for legal services. The Internet and Social Media Attorneys at Revision Legal are here to help. […]

Read more about FAQs About Legal Services for Social Media Influencers, Bloggers, and Online Content Creators

Take it Down Act: Ban on “Revenge Porn” Goes National

Take it Down Act: Ban on “Revenge Porn” Goes National

Internet Law

Congress recently passed the Take It Down Act (“TIDA”), and the law was signed by the President in mid-May 2025. See AP media report here. Interestingly enough, “Take It Down” is an acronym for “Tools to Address Known Exploitation by Immobilizing Technological Deepfakes on Websites and Networks Act.” TIDA prohibits what is commonly called “revenge […]

Read more about Take it Down Act: Ban on “Revenge Porn” Goes National

Put Revision Legal on your side