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

By Eric Misterovich

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.

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