The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.16

The Lanham Act prohibits registration on the Principal Register of marks that are primarily merely a surname. For many small businesses, this prohibition proves problematic because owners tend to want to include their own names in the business name to let customers know that they stand behind the quality of their goods or services. The United States Patent and Trademark Office applies a five-part test to determine whether registration should be denied on this basis. Its recent decisions, however, establish that some of these factors are weighted more heavily than others.

The Key Factors

Section 2(e)(4) of the Lanham Act states, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . consists of a mark which, . . . is primarily merely a surname.” 15 U.S.C. § 1052(e)(4). “A term is primarily merely a surname if, when viewed in relation to the goods or services for which registration is sought, its primary significance to the purchasing public is that of a surname.” Earnhardt v. Kerry Earnhardt, Inc., 846 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017). It is a question of fact as to whether the mark is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ2d 652, 653‒654 (Fed. Cir. 1985).

The factors to be considered in determining whether a term is primarily merely a surname include the following: (1) the degree of a surname’s rareness; (2) whether anyone connected with the applicant has that surname; (3) whether the term has any recognized meaning other than that of a surname; (4) whether the term has the “structure and pronunciation” of a surname; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333‒1334 (TTAB 1995). Doubts in the analysis are to be resolved in favor of the applicant. Id. at 1334.

Rarity Becomes Less Important

In its recent decisions, the Trademark Trial and Appeal Board (TTAB) has diminished the rarity factor and has refused registrations of marks consisting of a surname, even when the names at issue are exceedingly rare. For example, the TTAB affirmed refusal of registration of the OLIN mark for various chemicals on the basis that it was a surname. It found its significance would be primarily a surname based on evidence showing that there were 4,163 people in the United States with the surname during the 2010 census and that there were multiple renowned people with the surname. In re Olin Corp., 124 USPQ2d 1327 (TTAB Sept. 22, 2017) [precedential].

The Board also affirmed the refusal to register the KIPLING mark on the basis that it was primarily merely a surname in which the evidence showed only 363 people in the United States with the surname Kipling. In re Kipling Apparel Corp. No. 86356569 (TTAB Sept. 28, 2018) [not precedential]. And most incredibly, the Board affirmed refusal of the BELUSHI’S mark for hotel and travel services in International Classes 39 and 43, even though the surname is shared by only five persons in the United States. In re Beds & Bars Ltd., 122 USPQ2d 1546 (TTAB May 5, 2017) [precedential].

The Board relied on evidence that the public had been exposed to people with the surnames Kipling and Belushi as a result of the fame of author Rudyard Kipling and the comedic actors John and Jim Belushi, respectively. The Board determined that this showed that consumers would understand that the mark included what could be a surname, though they might not associate the product with a particular person with the surname. In both cases, no one associated with the applicant was named Kipling or Belushi.

Both applicants argued that the marks should be registered based on the Board’s precedent in which it permitted registration of the SOUSA mark for fireworks and pyrotechnic shows on the basis that the famous John Philip Sousa was associated with the patriotic songs and marches that typically accompany firework displays. See Pyro-Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002) [precedential]. The Board rejected this argument in both instances. It reasoned that while Rudyard Kipling was famous enough for the public to have been exposed to his name, he is not so famous, and his literary contributions are too remote for consumers to make the association when viewing the mark. Likewise, it found the evidence did not show that the Belushi brothers qualify as historical figures closely associated with hotel and travel services.

As to Olin, the Board relied on the fact that the applicant was founded by a man named Franklin Olin to find that registration was inappropriate. It further found that the applicant was concurrently advertising the involvement of Mr. Olin and publishing his biographical details on its website. As with Belushi and Kipling, the Board also found that there was no other meaning of “Olin” other than as a surname. On this point, the Board relied on the fact that there is no dictionary definition for the mark to establish a presumption of a lack of other meaning and the applicant did not provide countervailing evidence to rebut this presumption. In its decision, the Board noted that the fourth factor, whether the mark has the structure or pronunciation of a surname, was irrelevant in its analysis based on its finding that it was not a rare surname, the lack of a separate meaning, and the prior involvement of Franklin Olin.

Showing Another Meaning

Even when the applicant can show another meaning of the term, the Board may reject it as still primarily a surname. The Board rejected registration of WEISS WATCH COMPANY for watches, clocks, and related goods in International Class 14 on the basis that Weiss is primarily merely a surname, though the applicant showed another meaning for the surname Weiss. In re Weiss Watch Co., Inc., 123 USPQ2d 1200 (TTAB June 13, 2017). The applicant argued that the term “weiss” means “white” in German, and that consumers would understand this meaning when encountering its products. The Board rejected this argument, finding that Weiss is a common surname—one that is shared by the applicant’s head watchmaker—and consumers are unlikely to stop and translate the term.

Moreover, the addition of descriptive material, such as “watch company,” to a surname will not alter the surname analysis. The Board initially rejected an opposition to registration of EARNHARDT COLLECTION, finding that although “Earnhardt” standing alone would be primarily merely a surname, “collection” was not generic for the associated goods and services: furniture and custom home construction services. On appeal, the Federal Circuit held that the Board did not properly consider whether “collection” was merely descriptive or if it contributed any source-identifying significance to what was otherwise a surname. Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d 1411 (Fed. Cir. 2017). On remand, the Board found that “collection” was merely descriptive of the manner in which furniture and home construction services are marketed and sold, and found that its addition did not change the overall significance of the mark away from being primarily a surname. Earnhardt v. Kerry Earnhardt, Inc., No. 91205331 (TTAB Nov. 19, 2018) [not precedential].

Family Disputes

One of the stated reasons for denying registration of marks that are merely surnames is that a surname is “shared by more than one individual, each of whom may have an interest in using his surname in business.” Darty, 759 F.2d at 17. As such, the Board is no stranger to intra-family disputes over the right to use the family name in commerce. The dispute over EARNHARDT COLLECTION arose when the stepmother of the applicant’s president opposed registration of the mark on the basis that it was merely a surname and that it would cause confusion with her registered marks used in connection with sale of memorabilia concerning her late husband, the race car driver Dale Earnhardt.

Likewise, the Board refereed a dispute between cousins over the right to use AZEKA’S RIBS for barbecue sauce and found no winners. Azeka Building Corp. v. Azeka, 122 USPQ2d 1477 (TTAB May 3, 2017). The petitioner opposed the mark on the basis that it was merely a surname and would cause confusion with a similar mark to whose rights the petitioner had succeeded, which had been used in a local family-run rib restaurant. The Board upheld the opposition, finding that the mark was primarily merely a surname. Finally, the Board found that the petitioner had abandoned any rights in its competing mark because the restaurant had closed ten years prior and no food was served under that name in the intervening period. Although the petitioner attempted to license the mark during that time, its efforts were limited and unsuccessful.

Assemble Your Best Evidence

The Board’s decisions show that it can be very difficult to register a term that consists of a surname, regardless of how rare it might be, even with the addition of other material to the mark. Business owners and new entrants are well-advised to avoid the temptation of using their names in their brands, or to use their name in addition to a protectable mark, such as “Smith’s PINK ELEPHANT” for home renovation services.

But what about legacy business owners? All is not lost if you have been operating a business that includes your, or another person’s, surname. Section 2(f) permits registration of marks when they become distinctive of an applicant’s goods in commerce, even though they are primarily a surname. To overcome a surname refusal under Section 2(f), the applicant must specifically claim secondary meaning and prove it. Secondary meaning does not obviate the fact that the mark is primarily a surname. In re Cazes, 21 USPQ2d 1796 (TTAB 1991); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988). When seeking registration of a surname under Section 2(f), the applicant must be sure to meet its burden and have sufficient evidence to show that the mark has acquired secondary meaning in connection with the associated goods or services. So if you find yourself traveling this route, be sure to marshal your best evidence, including media references, sales figures, and consumer surveys, to respond to any office actions.

Another route to travel is to seek registration on the Supplemental Register, which includes marks that are descriptive and have not yet obtained secondary meaning. An applicant may seek registration on the Supplemental Register either initially, or, often, as an amendment in response to an office action finding a mark to be descriptive. Registration on the Supplemental Register is limited, however, to marks that are already in use, so this option is not available for marks that the applicant merely intends to use.

© 2019 International Trademark Association, reprinted with permission

For more information on registering surnames, contact your Intellectual Property Counsel at Smith, Gambrell & Russell.