Possible Obstacles When Filing a Surname As Trademark

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Under the US federal trademark law, it’s almost impossible to urge a trademark registration from the us Patent and Trademark Office (USPTO) on a mark that might be considered “primarily merely a surname”. Registration under such category tends to face refusal unless the applicant can prove that the name has another significance aside from that of a surname.

When a surname is employed for a trademark application, you would like to think about that the principal meaning of a trademark to consumers determines whether it’s primarily a surname and isn’t to be determined by the examiner’s subjectivity. Applicants must demonstrate to the USPTO that buyers within the marketplace view the applied-for mark as a regard to the corporate or brand instead of a surname., Under Section 2(e)(4) of the Trademark Act, a trademark that’s of first importance, a surname, is deemed unregisterable on the Principal Registry of the USPTO without showing an acquired distinctiveness.

However, it’s entirely possible to trademark a surname if evidence of long and exclusive use that changes the importance of a surname thereto of a selected good or service. When that happens, consumers not identify the applied-for mark with a surname but with particular goods or services.

HOW TO OVERCOME A SURNAME REFUSAL?

When applying for a trademark, applicants should remember that a lot of share an equivalent or similar last names. the aim behind refusing a primarily merely surname application is for the examiners to stay the shared names available for other applicants who may have an interest in using their surnames as a part of their business identity.

At times, even experienced examiners at the USPTO struggle with determining whether an applied-for mark may be a surname because the answer isn’t always obvious. Refusals are commonly issued to applicants whose marks did not show other recognized meanings aside from a surname. To avoid receiving a surname-based office action, the subsequent questions must be considered before choosing your trademark.

Is the surname commonly used? The more popular a surname is, a better likelihood for it to be perceived as a surname.

Is the proposed mark the surname of the applicant or of anyone connected with the applicant? If the solution is yes,, it’s more likely to be considered as a surname.

Does the proposed mark have any alternative meaning aside from a surname? If the mark has other recognized meanings, it’s presumably not a surname.

Does the proposed mark have the structure or pronunciation of a surname? A mark that appears or sounds different from a surname isn’t perceived as primarily a surname.

Is the proposed mark stylized enough to distinct itself from that of a surname? Adding distinctive design elements or stylization can turn a surname trademark into primarily not a surname.

These guiding questions are great in terms of their simplicity and skill to assist avoid potential surname refusals. Nevertheless, they’re not absolute. Each trademark case is suffering from a mixture of things that shape the general analysis. there’s no set formula to avoid a surname refusal, but there are ways to beat it once you receive one.

Applicants who own quite one registration of an equivalent mark within the same or related goods or services can potentially overcome an Office Action by doing the following:

Submit a claim of ownership of prior surname registrations on the Principal Register; or

Supply a signed declaration or an affidavit which affirms the mark’s distinctiveness through its substantially continuous use in commerce for a minimum of five years to the USPTO.

Applicants could also present evidence of acquired distinctiveness in support of the surname application. Evidence may include:

Promotional materials for the trademark;

Marketing spending dedicated to those promotions;

Testimonials from partnering companies and customers; and

Any evidence that recognizes the mark as a source identifier for specific goods and services.