When Your Brand Also Happens to Be a Surname

So you’re about to launch a new brand, and to file an Intent-To-Use Application with the US Patent and Trademark Office.

The application is rejected because the name of your brand is also a last name. Why was the mark rejected even though you’re not using it as an identifier of the name of the person who made it?

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

In this case, the easiest way to overcome the rejection is to modify the registration to cover a design, rather than just the name itself. Once you add the design to the mark, it is no longer primarily merely a surname, as the designed elements are also claimed as part of the mark.

In certain instances you can also prove that the surname is very rare, but in those cases it may be difficult to convince the trademark office, as there is no set limit for how many people need to have the surname before it is no longer obscure,