Using Your Name As a Trademark

If you offer goods or services branded with your name, you may be eligible to register your name as a trademark.

Section 2(e)(4) of the Trademark Act prohibits registration of a mark that is “is primarily merely a surname.” The “primarily merely” language sounds weird, and it is a little weird. The language was crafted that way to allow registration of words that are common surnames, but not primarily surnames, such as King or Cotton.

This law is meant to prevent someone named Johnson, for example, from registering a trademark for Johnson’s Hardware – which could be perceived as barring other Johnson’s from opening Hardware stores bearing their names.

Factors that would weigh in favor of allowing the mark are if the name is very rare, unconnected with the applicant, has other recognized meaning, does not have the “look and feel” of a surname, or if the stylization creates a distinct commercial impression from a surname.

Historical names are generally allowable, for example Da Vinci and Hancock.

Finally, if you are applying for a mark that includes your name, or the name of another living person, you need that person’s consent to register the mark. Which really puts a damper on my hopes of opening Scott Bakula Legal®.