For many new companies, coming up with a unique name is not easy. As a result, companies often fall back on the family name of one of the founders as an easy and identifiable way to enter the marketplace. Companies may now want to rethink that approach given the U.S. Patent and Trademark Office’s (PTO’s) new examination guidelines for trademarks incorporating surnames.
Under Section 1052 of the United States Code, a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness. 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. To help make such a determination, the PTO’s Trademark Manual of Examining Procedures identifies five factors to consider regarding the public’s perception of a term’s primary significance:
- whether the surname is rare;
- whether the term is the surname of anyone connected with the applicant;
- whether the term has any recognized meaning other than as a surname;
- whether it has the “structure and pronunciation” of a surname; and
- whether the stylization of lettering is distinctive enough to create a separate commercial impression.
Nothing new here. What is new, however, is that prior to the new guidelines, the PTO had not applied the surname rule to a trademark incorporating a surname if it was combined with other descriptive wording. The guide now explains that under such circumstances:
- the mark must be considered as a whole; and
- refusal of registration is generally appropriate if the applied-for mark combines a surname with non-distinctive terms.
Seems clear, right? Well, would you have then thought a registration for HUTCHINSON TECHNOLOGY for etched metal electronic components, namely magnetic head support beams, flexible circuits, and flexible assemblies for disk drives would be registrable? The Federal Circuit did, arguing that the term “technology” is “too broad” to immediately convey the idea of the specific electronic goods listed in the application. Specifically, the court found that term “technology” could include many categories of electronic goods and therefore as such, was not merely descriptive thereof.
Notwithstanding the case above, given the uncertainty in predicting which additional terms are or are not merely descriptive of the goods/services covered by an application, trademark owners may simply want to stay away from marks that combine a commonly known surname with arguably descriptive wording.
Alternatively, trademark owners may want to shift their focus to forenames (sometimes also referred to as “personal” or “given” names) since unlike surnames, there is no similar provision in trademark law regarding marks comprising a person’s given or first name. As a result, we may start to see a shift in the type of “name” marks companies adopt in the coming years. For example, MARY’S CUPCAKES may be just fine, assuming a legal clearance confirms there are no pre-existing confusingly similar marks. However, yet another provision in the U.S. Code may require you to obtain Mary’s written consent to registration if there is evidence that MARY identifies an individual who is generally known or publicly connected with the business in which the mark is used.