Choosing the right name is important when starting a business because the business name plays an important role in brand growth and perception. For many family-owned enterprises, business name and surname are inextricably and reputationally linked.

Many well-known businesses have been named for their founders: Johnson & Johnson, McDonald's, Guinness, Ford, Dell, Chase, to name a few. However, because surnames are shared by more than one individual, each of whom may have an interest in using that individual's surname in business, the Lanham Act bars the registration of marks that are "primarily merely a surname," without a showing of "acquired distinctiveness."¹

Here we discuss considerations to keep in mind when choosing a business name or trademark, and how to improve your chances of registration if you choose to use a surname trademark.

Trademark Basics

A trademark is a signifier that identifies a unique source of goods or services. Trademark law serves a dual purpose. First, it protects consumers from deception by ensuring that the public is not being misled about the source of goods and services. Second, it protects the rights of a business to identify itself and protect its reputation and goodwill.

The United States has a "use-based" trademark system. This means that trademark rights arise automatically when a seller uses a mark in commerce in connection with the sale of goods or services. These automatic rights grant the trademark owner the right to exclude others from adopting and using the mark in the geographic area in which the owner operates.

While federal registration is not required, federally registered trademarks enjoy greater protection than unregistered marks. Among other benefits, federally registered marks have nationwide priority, which means that the trademark owner has the ability to preclude others from adopting and using the mark anywhere in the United States.

Another benefit of federal trademark registration is that the owner can file an "intent to use" trademark application as long as you have a good faith intention to use your trademark in commerce. An intent to use trademark application gives you the right to prevent others from registering for the same or similar trademark, even if you have not started using the trademark in commerce. However, if you do not begin to use your trademark within a certain period (up to three years from approval, with extensions), your application will lapse without achieving trademark protection.

Surnames as Trademarks

The U.S. Patent and Trademark Office (USPTO) prohibits the registration of any mark that is primarily merely a surname without a showing of secondary meaning. This means that if a trademark would be perceived by consumers to be only functioning to identify the individual providing the goods and services, the trademark office will deny registration on the Principal Register until you have developed enough consumer recognition in the name as something more than just a surname; this is secondary meaning.

To decide whether the trademark is primarily merely a surname, the USPTO assesses how the consuming public would view the trademark. The USPTO will consider, among other things:

• 1. Whether the surname is rare. However, the fact that a surname is rare does not preclude a finding that the term would be perceived as primarily merely a surname.
• 2. Whether the term is the surname of anyone connected with the applicant. If the term is the surname of a person associated with the applicant, it is evidence of the surname significance of the term.
• 3. Whether the term has any recognized meaning other than as a surname. If the term has a recognized meaning apart from its surname significance, it is evidence that a term would not be perceived merely as a surname.
• 4. Whether it has the "structure and pronunciation" of a surname. If a surname looks like a surname, it is evidence that the term would be perceived as a surname.
• 5. Whether the stylization of lettering is distinctive enough to create a separate commercial impression. If a term is coupled with a distinctive stylization or design element, it is not considered primarily merely a surname.

If the USPTO determines that consumers would not perceive the trademark as primarily merely a surname, it will be treated like any other trademark and you will be allowed to file an intent to use application. Names that fall into this category are surnames that have other meaning as well, e.g., Block, Smith, Miller, Walker, Wood, Baker, Fisher, Weaver, etc.

If the USPTO determines that your trademark would be perceived as primarily merely a surname, you can still register your trademark but your protection is very limited. You can register your surname mark on the Supplemental Register which will block third parties from registering the name but it does not cover the other benefits of a registration on the Principal Register, namely, presumptive exclusive rights and ownership.

The other option is to wait until you can prove secondary meaning. Secondary meaning exists when consumers recognize the surname trademark as a signifier that distinguishes the goods or services of one seller from another.

There are two ways to prove secondary meaning: (1) use the mark for substantially exclusive and continuous use in commerce for the five years preceding the date on which the claim of distinctiveness is made, or (2) provide proof of consumer recognition of the name as a brand name and not just a surname.

Option 1 requires no evidence other than the declaration, so this is often the best choice for many brand owners. However, this option is not without risk. It means that for the first five years that you use a surname trademark, you will not have the benefit of federal trademark protection and will not be able to prevent others from using the same or similar trademark.

Tips for Using a Surname as a Trademark

If you choose to use a surname as a trademark, you can take certain steps to make your mark look less like a surname and thereby improve your chances of registration without showing secondary meaning. Among other things you can:

• 1. Add a first name in addition to a surname.
• 2. Stylize your mark and/or include a design element.
• 3. Add other words to the trademark.
• 4. Change some of the letters in the surname.

Conclusion

Surnames have a long history of being used as trademarks, often very successfully. However, for the reasons discussed above, surname trademarks pose challenges that other types of marks do not.

Therefore, it is important to think carefully about how to best use a surname in a business name before choosing a surname trademark. If you choose to use a surname trademark, you should talk to your attorney to develop a strategy to improve your chances of registration without the necessity of showing secondary meaning.

FOOTNOTE

1  15 U.S.C. 1052.

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