T.M.E.P. § 1211
Refusal on Basis of Surname
Executive summary:
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1211 Refusal on Basis of Surname
Extract from 15 U.S.C. 1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (e) Consists of a mark which ... (4) is primarily merely a surname.
Under §2(e)(4) of the Trademark Act, 15 U.S.C. 1052(e)(4), a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. 1052(f). See TMEP §§1212 et seq. regarding acquired distinctiveness. Formerly §2(e)(3) of the Act, this section was designated §2(e)(4) when the NAFTA Implementation Act took effect on January 1, 1994. A mark that is primarily merely a surname may be registrable on the Supplemental Register.
The Trademark Act, in §2(e)(4), reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name. In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985).
The question of whether a mark is primarily merely a surname depends on the mark's primary significance to the purchasing public. See, e.g., Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pats. 1955). Each case must be decided on its own facts, based upon the evidence in the record.