In August 2017, the U.S. Patent and Trademark Office issued new guidelines governing registration of marks consisting of a surname and other wording. The guidelines, released as the “ Examination Guide 3-17,” resolve an inconsistency between the Trademark Manual of Examining Procedure and controlling Federal Circuit Court of Appeals case law.

Previously, TMEP § 1211.01(b)(vi) provided that when an applied-for mark contains merely descriptive wording combined with a surname, the mark should not be refused registration as “primarily merely a surname” under § 2(e)(4) of the Trademark Act, because merely descriptive wording is capable of functioning as a mark. That directive was at odds with a commonly cited proposition in In re Hutchinson Tech. In that case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s refusal to register the mark HUTCHINSON TECHNOLOGY under § 2(e)(3). The court reasoned that the TTAB should have considered how the purchasing public would react to the mark in its entirety, rather than simply to “Hutchinson” or “Technology” as component parts.

Last May, the TTAB drew attention to the inconsistency between the TMEP section and relevant case law in Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477 (TTAB 2017). It affirmed the refusal of the mark AZEKA’S RIBS for “barbecue sauce” as primarily merely a surname. It explained that, as in Hutchinson, the proper inquiry is the meaning of the mark as a whole and is not limited to the question of whether the additional wording aside from the surname—the word “ribs” in this instance — is capable of functioning as a mark.

The Federal Circuit weighed in on this issue in July. In Earnhardt v. Kerry Earnhardt, Inc., the court reversed the TTAB's dismissal of the opposer’s claim that the mark EARNHARDT COLLECTION was primarily merely a surname. The court said the TTAB made an incomplete assessment by only looking to the term “collection” and finding it was not generic for the applicant’s furniture goods. The court explained that that when a mark contains a surname and an additional term, that additional term should first be evaluated to determine whether it is merely descriptive or generic—but then the mark should be evaluated in its entirety (consistent with Hutchinson) to determine whether the additional term alters the surname significance of the mark. The court remanded to the TTAB to reevaluate the mark using that two-step test.

The new Examination Guide 3-17 instructs that marks must be examined consistent with the test as stated in Earnhardt. It also notes that in most cases, if the additional term(s) are generic or merely descriptive, they will not alter the character of the mark, and refusal of the mark under § 2(e)(4) will be appropriate. These new instructions were incorporated into the October 2017 revision to the TMEP.

This directive should make the Trademark Office’s examination of the surname-based composite marks more consistent in their analysis, which in turn might help brand owners to better understand the risk and costs for prosecuting these types of marks.