- Published: 08 January 2019 08 January 2019
By Melissa A. McCurdy, Partner, Standley Law Group LLP
A common misconception regarding U.S. trademark law is that a person has a natural right to use his or her family name (surname) in conjunction with offering goods or services in commerce. The general rule is that surnames cannot be registered as trademarks. See Lanham Act, Section 2(e)(4). However, this rule can be overcome. To determine whether a surname should be federally registered as a trademark, and hence protectable as such, the U.S. Trademark Office looks at various factors to determine whether the mark will be perceived as predominantly a “surname”, including whether the proposed mark is a common or a rare surname, the latter favoring registration, and whether the proposed mark has any other recognized meanings other than a surname (if yes, this tips in favor of registration). The key question is whether the public is likely to recognize the proposed mark as a surname. If the answer to this question is yes, the mark should not be registered. However, even when the Trademark Office initially finds that a surname is not entitled to protection as a trademark, this can change when it can be shown that the surname has acquired distinctiveness as a trademark. This typically takes at least five years of continuous use of the mark in commerce and can require additional evidence indicating that the public perceives the mark as an indicator of source as opposed to a trademark. See In re: Soccer Sport Supply Co., 507 F.2d 1400, 1403 n. 3 (C.C.P.A. 1975); see also 15 U.S.C. § 1052(f). While the general rule is that surnames are not registerable, there are many surnames that have been federally registered as trademarks as well as surnames which have acquired distinctiveness as trademarks under the common law. This means that adoption of a surname as a trademark needs to be carefully vetted just like any other situation to ensure that your proposed trademark use would not infringe upon the trademark rights of a third party.
Even if a search indicates that your surname is available for use because it does not infringe upon the rights of a third party, there are risks involved with using a surname as a trademark that should be considered. For one, you may have a very difficult time protecting the mark, especially if the surname is a common one. This means competing businesses could be able to adopt and use the same mark with little to no recourse. Second, you must be very careful to ensure that ownership of the trademark, who has the rights to use it, and how, is clearly established in writing. This is important in all cases but even more so where numerous family members that share the surname are involved in the business. See, e.g. One World Foods, Inc. v. Stubbs Austin Restaurant Company LC et al., No. 1:2015-cv-01071 (W.D. TX 2015) (failure to get trademark agreement in writing resulting in Stubbs Austin Restaurant Company having to change its name after many years in business). Trademark disputes in a family business can destroy family relationships and cripple the business. Moreover, they can make the business impossible to sell. Create clear and definite agreements that leave no questions about who owns the trademark and controls its use to try and eliminate issues. Another important question to ask yourself before adopting your surname as the trademark for your business is what might happen if the business is eventually sold? If the business is successful, the trademark is likely going to be a very important component of the transaction. Accordingly, the business will likely continue to operate in the future, under your name, but you are no longer connected to it. This can be a difficult reality for many people and, in some cases, can make future business ventures complicated.
In conclusion, you may be able to use your name as the trademark for your business, but it may not be the decision that makes the most sense. If you are considering adopting a new trademark, contact a qualified trademark practitioner who can help you avoid costly pitfalls.