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Dealing with a Trademark Rejection for Being Merely a Surname: Understanding the Legal Landscape

Written by Saul Acherman - February 18, 2025

When submitting a trademark application to the United States Patent and Trademark Office (USPTO), one potential obstacle an applicant may encounter is the rejection of a mark for being “merely a surname.” Under U.S. trademark law, certain marks that consist exclusively of a surname are not eligible for registration unless specific conditions are met. This rejection typically arises under Section 2(e)(4) of the Lanham Act, which provides that marks that are primarily a surname are not registrable unless they have acquired distinctiveness or are shown to have secondary meaning.

This article provides an overview of the legal basis for surname rejections, case law illustrating the application of these rules, and guidance from the Trademark Manual of Examining Procedure (TMEP).

Legal Foundation: Section 2(e)(4) of the Lanham Act

The Lanham Act, the primary federal statute governing trademark law in the United States, explicitly addresses surnames in Section 2(e)(4). The relevant section 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…(e) consists of or comprises a mark which is primarily merely a surname.”

Thus, a mark that is primarily a surname is initially presumed to be unregistrable unless the applicant can prove that the surname has acquired distinctiveness through use in commerce or meet certain other exceptions.

The USPTO’s Approach: TMEP Guidelines

The USPTO follows the guidelines set forth in the Trademark Manual of Examining Procedure (TMEP) to determine whether a mark is merely a surname. TMEP Section 1211 provides specific rules and factors to consider in surname determinations. These include:

1. Primary Significance Test: Whether the primary significance of the mark is a surname is evaluated by considering the mark in the context of how it would be perceived by consumers. The USPTO will assess if the mark is a recognized surname, and whether it’s perceived as identifying an individual or a family name.
2. Factors for Determining Surname Status:
   • Whether the surname is rare or common.
   • Whether the mark is used in connection with goods or services typically associated with surnames.
   • Whether the mark is used in a manner consistent with how surnames appear in the marketplace (i.e., capitalization, lack of ornamentation).
3. Evidence of Acquired Distinctiveness: If a mark is primarily a surname, the applicant may overcome the rejection by providing evidence that the surname has acquired distinctiveness through extensive use in commerce (e.g., advertising, sales figures, and media recognition). Under Section 2(f) of the Lanham Act, applicants can file a claim of secondary meaning to prove that the mark has become uniquely associated with the applicant’s goods or services.

Relevant Case Law

Several precedential cases have clarified how surname rejections are applied and how applicants can overcome these rejections.

1. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995)

• Holding: In this case, the TTAB held that the mark “BENTHIN” was primarily a surname and was not eligible for registration without showing acquired distinctiveness.
• Reasoning: The applicant attempted to register “BENTHIN” for a variety of services, but the Board found that “Benthin” was a common surname in Germany and that the mark lacked the necessary distinctiveness to identify the applicant’s goods or services. The applicant was required to demonstrate secondary meaning.
• Significance: This case illustrates that even marks that are not commonly used in the U.S. can still be rejected if they are recognized as surnames in other regions, especially if the surname is uncommon but identifiable.

2. In re McDonald, 12 USPQ2d 1052 (TTAB 1989)

• Holding: The TTAB ruled that “McDonald” was a common surname and therefore the mark was presumed to be primarily a surname under Section 2(e)(4).
• Reasoning: The Board emphasized that the surname “McDonald” was widely recognized and registered in the U.S. as a surname. The applicant failed to provide sufficient evidence that the mark had acquired distinctiveness. Therefore, the refusal was sustained.
• Significance: This case underscores the fact that surnames that are common and widely recognized, even when associated with a different industry or type of product, are more likely to be rejected under the Lanham Act’s surname provision.

3. In re Hotelier.com, Inc., 87 USPQ2d 1136 (TTAB 2008)

• Holding: The TTAB found that “HOTELIER” was not primarily a surname but rather a term commonly used to refer to hotel owners or operators.
• Reasoning: The TTAB determined that the mark “HOTELIER” was not primarily a surname, given its dictionary meaning and widespread use in the hospitality industry. The ruling clarified that marks must be assessed in context, considering not only the mark’s appearance but its association with the applicant’s goods and services.
• Significance: This decision demonstrates how context and public perception influence the determination of whether a mark functions primarily as a surname. Marks that have multiple meanings or associations may not be subject to surname rejection.

Overcoming a Surname Rejection: Proving Acquired Distinctiveness

As outlined in the TMEP Section 1211.02, an applicant can overcome a surname rejection by providing evidence of acquired distinctiveness (secondary meaning) under Section 2(f) of the Lanham Act. Examples of evidence that can support this claim include:

• Length of Use: The applicant may provide evidence of how long the surname has been used in commerce. Longer use can demonstrate that consumers have come to recognize the surname as a source identifier for the applicant’s goods or services.
• Sales and Marketing Evidence: Proof of significant sales figures, advertising expenditures, and media recognition can bolster a claim of acquired distinctiveness.
• Consumer Affidavits or Testimony: Evidence from consumers, such as affidavits attesting to the association of the surname with the applicant’s brand, can strengthen the claim of secondary meaning.
• Marketing Materials: Examples of how the mark has been used in marketing, especially if it has been presented in a stylized format or used in connection with distinctive branding, can help prove that the mark has taken on a distinct source-identifying role.

Conclusion

A trademark rejection for being “merely a surname” can be a significant hurdle for applicants seeking to register a mark with the USPTO. However, applicants can overcome this rejection by proving that the surname has acquired distinctiveness through extensive use in commerce. Understanding the provisions of the Lanham Act, the guidelines set forth in the TMEP, and relevant case law is crucial for navigating this process. By providing the necessary evidence of secondary meaning, applicants can improve their chances of securing a trademark registration even if the mark is primarily a surname.  

If you have received a rejection for your application based on your mark being merely a surname, it is important to seek legal advice. Please feel free to contact Jafari Law Group at (949) 362 – 0100 for professional assistance with any trademark or intellectual property concerns.