Trademarks – The Surname Game

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The New Business Name

Almost every business starts on a small scale, such as in the founder’s garage (or now, out of the founder’s laptop). In many instances, the surname of the founder becomes the name of the business and brand for its goods and services. There is a bit of founder vanity involved in doing so, but it might also be a wise move to capitalize on the local fame or expertise of the founder while getting the fledgling business on its feet.

Surnames Are Special

Is that approach to branding a good idea in the long run? When it comes to trademarks, surnames are treated somewhat special, and not necessarily in a good way. Surnames are special because Congress says so, in this sort of double negative statutory pronouncement: “No trademark by which the goods of others shall be refused registration on the principal register on account of its nature unless it … [c]onsists of a mark which … is primarily merely a surname … ” 15 U.S.C. § 1052(e)(4).

A mark that is “primarily merely a surname” may be federally registered as a trademark on the Supplemental Register of the U.S. Patent and Trademark Office (USPTO). However, for a surname to be registered on the USPTO’s Principal Register something more is required, and that hinges on what it means to be “primarily merely” a surname. How is something “primarily merely” of anything? Can the sun be “primarily merely” shining? Can your SUV be “primarily merely” red? Can someone be “primarily merely” dead? This is an example of constitutional linguistics at its finest.

Purchasing Public Perception (and Protection from Confusion)

For federal registration purposes, the test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public. In making this determination, some of the factors to be considered include:

  1. Whether the surname is rare.
  2. Whether anyone connected with the trademark applicant uses the term as a surname.
  3. Whether the term has any recognized meaning other than as a surname.
  4. Whether the term has the “look and feel” of a surname.

Surnames as trademarks are treated as special because they are shared by more than one person, and each person may have an interest in using that term as the name for his or her business. One primary purpose of our trademark law is to protect the public from confusion via trademark usage. For example, chaos would ensue if everyone named Clinton could claim the exclusive right to use and protect that term as a trademark for anything and everything. Generally, the law requires that a surname has achieved “acquired distinctiveness” in order for its owner to claim exclusive rights to that term for specific goods or services. This again hinges on the perceptions of the purchasing public.

As trademark lawyers, our advice is to always try to select a brand that is distinctive from the outset. Surnames are, by statutory definition, not distinctive. Long-term and exclusive use of a surname is important in establishing its distinctiveness. Our world is full of surname brands where that is the case, such as Hilton, Gillette, Mayo, Honeywell, Gucci, and even Anderson (for windows). We don’t necessarily discourage our clients from using their own names as brands, but we do try to point out that achieving brand distinctiveness (and federal registration) for a surname mark may take some doing.

TRUMP – The Trademark

We currently have a situation that is quite unique in the annals of branding history. We’ve had famous men become president before (famous for reasons other than politics). Eisenhower achieved military fame and Reagan achieved Hollywood fame, both before running for office. Donald J. Trump achieved fame on multiple levels before running for president, as a businessman, socialite, reality TV star, and by naming hotels and tall buildings after himself. In Trump’s case, he also sought and obtained federal trademark registrations for the TRUMP surname (via applications filed in the name of Donald J. Trump as applicant) thereby creating and protecting the TRUMP brand before his foray into politics. There are 15 U.S. registrations for the surname word mark TRUMP, for such varied products as limousine services, coffee, real estate services, greeting cards, toy cars, restaurant services, and vodka (Aha! The Russian Connection!).

Trump has also sought registration for the TRUMP brand outside the United States with numerous trademark applications in such countries as Canada, Mexico, the EU and China. A sitting president being granted intellectual property rights by a foreign government is unusual, unprecedented, and may raise conflict of interest issues. However, this approach (attempting to dominate commerce on foreign soil for the TRUMP brand/surname) seems totally consistent with the president’s “America First” initiative, at least for one American. Z. Peter Sawicki and James L. Young

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