Overcoming a Surname Refusal From the USPTO

Registering a trademark can protect your intellectual property. While you may want your company to bear your personal moniker, complications could arise if your business entity is considered a surname. The US Patent and Trademark Office (USPTO) doesn’t always grant trademark protections in these instances. Overcoming a surname refusal from the USPTO is not impossible when you are empowered with the knowledge to do so.

Refusal on the Basis of Surname

Identifying a product, business, or service with a last name can feel like a sense of accomplishment. Customers from all over begin to associate your name with a product they know and love. In order to protect that, you can apply to the USPTO to ensure that the positive reputation you are building is specific to you and your business. However, nothing can feel like a greater setback than being denied that association through a refusal from the USPTO.

The USPTO follows strict guidelines in issuing trademarks, particularly when it comes to those involving surnames. Under the law, trademarks may not be issued based on an application in which the mark is primarily based on a surname. The USPTO deems these types of marks as not registerable because they lack distinctiveness. Most often, refusals are based on any one of the following reasons:

• Significance geographically. Some last names are reminiscent of popular locations throughout the world. In these cases, the trademark is likely to be declined. Take, for example, the last name Austin. While it may be rare as a last name, it is also synonymous with a popular city. In this case, the trademark would likely be declined.
• Relation to a historical person or place. If there is significant evidence to show that the public generally associates a name with a historical figure or place, their trademark will likely be denied. For example, if the application is for Lincoln, the application will likely be denied as most people will associate the name with the late president.
• Look and feel of a last name. In some cases, a trademark application will be for a trademark that is not a last name but could be recognized as one. In this situation, the trademark could be denied on the basis of look and feel.
• The rarity of last name. If a surname is extremely rare, this could be used as a reason to deny the mark. While a rare name may be distinctive, there are other considerations to be taken into account, and rarity would not be enough for approval.
• Meaning in everyday language. When a last name is also associated with a general understanding of a common language, it is more likely to be approved. If it is just a surname, then it is likely going to face a refusal.

These are just a few of the reasons that a trademark could receive a surname refusal. In order to still pursue a trademark using a surname, there must be evidence that shows there is significance to the last name when considering the purchasing public.

Overcoming a Surname Refusal

In order to fight back against a refusal, it is first important to understand the criteria used to determine trademark approvals. Simply, it comes down to five factors:

1. Is the last name rare?
2. Is the applicant’s last name the same as the trademark to which they are applying?
3. Is there any recognition of the term by the public in any definition beyond a last name?
4. Does the trademark have the look and feel of a last name?
5. Is there enough separation from a last name to create a significant commercial impression?

These five criteria are the basis for fighting back against a refusal. To begin, evidence can be submitted to support any of these criteria. Often, this starts by proving there is significance beyond a last name. Next, evidence can be presented to show that the trademark has been in regular commercial use for more than five years.

Other ways to present evidence can include producing advertisements that are regularly used with the trademark, surveys issued to consumers, coverage by the media in which the trademark is used, reports of sales, proving the length of use, and showing the exclusiveness of the trademark use.

These are just a few of the ways in which you can present a case to rebuke a surname refusal. Working with an experienced and knowledgeable attorney can help to determine a course of action.

FAQs

Q: What Would Cause a Refusal or Office Action by the USPTO?

A: There are several reasons that a trademark could be refused by the USPTO. These reasons include its specific relation to a local geographic location, the trademark is primarily a surname, it is deceptive in nature, it is likely to cause confusion, and more. Before submitting your trademark application, an attorney can review your application for potential obstacles.

Q: What Is a Surname Trademark?

A: Surname trademarks are those that could be beneficial to family-operated businesses. The trademark is used to identify the goods or services provided by the business in the hopes that the name becomes synonymous with the product. When a surname is trademarked, it distinguishes that business from others. Businesses that utilize these types of trademarks may have the intent of passing the business through generations.

Q: What Happens if You Don’t Trademark a Name?

A: Failing to trademark a name can leave a business susceptible to infringement from competitors. While a business could use its logo and manage rights to it in its local geographic area, it could have difficulty protecting itself from larger businesses and corporations or those who may operate outside of their geographic location from using their trademark.

Q: How Hard Is It to Trademark a Name?

A: The difficulty in trademarking a name is a matter of the circumstances surrounding the application. With the help of a qualified attorney, you can find the application fairly simple; however, there are many different obstacles that you may need to overcome. An attorney can guide you through the process in order to help your application meet successful approval.

Overcoming a Surname Refusal From the USPTO

Whether you are facing a surname refusal or you are just starting your trademark application, the business law attorneys at Four Reasons Legal can help. Contact us today, and let us help answer the questions you need to keep your business moving forward.