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  • Writer's pictureDavid Sterrett

Trademarking a Brand With a Surname

You’ve decided to register your Mark with the USPTO. That’s a huge step forward in protecting your business and your brand. But what if your Mark is your name?

No problem, right? You should be able to get a trademark for your name; after all, it’s yours … and most probably has been yours since your birth certificate was signed.

But remember, a trademark/service mark identifies and distinguishes the source of the goods/services of one party from another. As such it offers protection to the consumer who has grown to trust the brand – and it protects the provider of the goods and services from other providers trying to use their good name. It’s not surprising that the USPTO warns applicants that it is unlikely to register surnames or an individual's name for trademark protection unless certain conditions are met.

First, it must not be “primarily a surname”.

The applicant must prove that the has a "secondary meaning" by being part of a unique brand that is used in marketing and commerce and is widely recognized by consumers. In other words, it must be used to distinguish the source of the goods or services you provide. Establishing secondary meaning can be difficult, but there are many instances of a personal name becoming a strong recognizable mark that identifies certain goods and services from one source. Think Trump, Kate Spade, Estee Lauder.

If you’re considering using your personal name as a trademark, check out the TMEP provides 5 factors to help you decide if a name is “primarily merely a surname”.

The rarity of the name (the more uncommon a name is, the less likely it is to be viewed as “primarily merely” a name);

Whether the name is the name of the applicant (if the mark is actually your name it may increase the likelihood that it is viewed as a name);

Whether there is a significant non-surname meaning (for example, last names like BIRD and LANE);

Whether the mark looks and sounds like a surname (sometimes even rare names are obviously names); and

Whether the mark is presented in a stylized format (sometimes stylization can be distinctive enough to create a separate commercial impression).

These questions can help you understand the likelihood of getting to get federal trademark protection for your name as your Mark.

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