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What Is a Primarily Merely a Surname Refusal?

After the Trademark Office reviews your application, you may receive an “office action” on your application.  The office action will specify any reasons for rejection or issues that need to be addressed for your trademark application to move forward.  A common basis for rejecting an application is that the trademark is primarily merely a surname.  The surname refusal is a major issue, but you may have some options if you receive this type of rejection.

Primarily Merely a Surname Refusals

This refusal will issue when your trademark primarily consists of a surname (or last name).  For example, if I provided my legal services under the name HAYNIE LAW FIRM, that trademark is primarily a surname.  The phrase LAW FIRM is generic for legal services, so the trademark is mostly just my surname, Haynie.

While all this may seem straightforward, this refusal can sometimes be more complicated.  For example, let’s say that you make up a word as your trademark.  That type of trademark (coined or fanciful) is typically the strongest and given the broadest scope of protection.  However, you might receive this rejection if the word looks and sounds like a last name.  You may also receive the rejection if the word actually is a common last name.  Because it can sometimes be difficult to determine what consumers would view as a last name, the Trademark Office looks at a number of factors:

  1. Is the word’s use as a surname rare? (Approximately how many in the U.S. have the surname?)
  2. Is the word the surname of anyone connected with the applicant?
  3. Is there any recognized meaning to the word aside from its use as a surname?
  4. Does the word have the structure and pronunciation of a surname? (Does it look and sound like a surname?) and
  5. Is the stylization of the word distinct to the point that it creates a separate commercial impression?

Of these factors, the first two probably come into play the most.  For example, if the Trademark Examining Attorney says that 10 people in the U.S. have a given surname, that would obviously be an extremely rare surname.  On the other hand, even if a name is rare consumers will still likely view it as a surname it is the owner’s last name.

How to Respond to a Surname Refusal

If you receive this type of rejection, you have a few options.  First, if you do not believe your trademark is primarily a surname you can make an argument to the Examining Attorney.  You can present arguments and evidence that the surname is rare, for example.  Alternatively, you might argue that the name has some other meaning than just as a surname.  If you are successful, the Trademark Examining Attorney will withdraw the rejection and your trademark will be published for opposition.

Another method of responding would be to add a claim of acquired distinctiveness to your application.  You would want to do this if you have been using your trademark for a period of 5 or more years.  If so, you can make this claim under Section 2(f) and the Trademark Examining Attorney should approve your mark for publication on the Principal Register.

Finally, you might amend to the Supplemental Register if these other options are not viable.  If your application was filed on an intent to use basis, then you will first have to show use of your mark in commerce to do so.  Of course, this requires you to provide your products and/or services first.  You will then need to file an Amendment to Allege Use (similar to the Statement of Use) before the Trademark Office will allow amendment to the Supplemental Register.  If your application was filed on an in use basis, this step is not necessary.  You would be able to amend to the Supplemental Register right away.

Have You Receive a Primarily Merely a Surname Refusal?

If the Trademark Office has rejected your application, you do have some options available to get your registration.  However, you will need to take the proper steps and respond within the allotted time frame.  Failure to take the necessary steps will mean that your trademark application goes abandoned.  If you would like for me to review your application and discuss your options, please feel free to call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.

Contact Kevin

P.O. Box 94208
Phoenix, AZ 85070

(314) 479-3668

kevin@yourtrademarkattorney.com

© 2019 Kevin Haynie
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