As we have written previously, using your own name as your business name carries a certain number of risks. In certain jurisdictions, such as the US, there are also restrictions on registering surnames as trademarks.
Broe Management, a US real estate and investment company founded in 1970 by Pat Broe, attempted to circumvent this restriction by applying to protect a stylised version of the brand name Broe (pictured, right). However, the US Patent and Trademark Office (USPTO) refused the application on the basis that Broe is a surname - one that also belongs to a famous artist and an Olympic athlete, among others. The USPTO also found that the inclusion of the green letter ‘o’ was not enough to make the brand sufficiently stylised.
The test of acquired distinctiveness
Despite the restrictions, it is possible to register a surname as a trademark in the US, if it can be shown that the last name has acquired distinctiveness through use. Broe could not initially prove this because the stylised logo had only been used since August 2015, which is significantly less than the five-year period normally required by the USPTO for a successful appeal on the basis of acquired distinctiveness. Acquired distinctiveness can apply where the trademark has become widely recognised through long-term or intensive use; in other words, the sign has begun to function as a distinguishing sign, and thus as a trademark.
Nonetheless, Broe was able to support its appeal against the USPTO’s initial ruling by showing that it had been using the trading name Broe, in plain block capitals, for more than 40 years.
In its decision, the USPTO’s Trademark Trial and Appeal Board referred to the USPTO’s "longstanding practice of allowing registration of surnames under Section 2(f) upon a showing of substantially exclusive and continuous use for five years… The Board found no reason not to follow that practice here, since it had already found that the applied-for mark creates the same commercial impression as the word Broe”.
Refusals after the fact
If you have been refused registration of your name as a trademark, either for the reason that it was not considered distinctive or because it was already taken, you are not prevented from using your name for ordinary business purposes. However, it is advisable to consult with a trademark attorney to ensure that your use of the mark is not infringing the existing registered right.