By Rich Stim
The use of surnames (family names) is sometimes a controversial issue, because some business owners believe they have an inalienable right to use their own name as a trademark. They are surprised to find they cannot register their name or that someone else has preempted the field. For example, anyone with the family name McDonald or Denny would not be able to obtain a trademark for restaurant services.
A mark that is primarily a surname does not qualify for placement on the Principal Register under the Lanham Act unless the name has become well known as a mark through advertising or long use—that is, until it acquires a secondary meaning. Until then, surname marks can only be listed on the Supplemental Register. To register a mark that consists primarily of the surname of a living person (assuming the mark has acquired secondary meaning), the mark owner must have the namesake's written permission to register the mark.
Surnames are treated this way because, theoretically, everyone should be able to use his or her own name to promote their own business or product. In practice, however, as soon as someone establishes secondary meaning for a surname, it becomes off-limits for all uses that might cause consumer confusion. Del Monte, Disney, Spiegel, and Johnson & Johnson are just a few of the hundreds of surnames that have become effective marks over time.
A trademark is "primarily a surname" if the public would initially recognize it as a surname. A trademark application for a surname need not automatically be denied simply because it is a surname, or similar in sound or appearance to other surnames. Examination of an application for a surname should focus on how many people have that same surname and thus would be affected by registration of the surname. Extremely rare or obscure surnames—such as the surname "Baik"—do not necessarily require proof of secondary meaning. (In re Joint-Stock Company "Baik," Serial No. 78341041 (TTAB 2006).) However, a mark that is part surname and part distinctive mark may be registrable if the mark as a whole is distinctive, or if the surname is disclaimed as unregistrable material.
For example, two names may be combined (Smith and Wesson), or perhaps a name used with a design may be registrable. The reason for this is that when a surname is used with other matter, the "other matter" can affect public perception diminishing (or perhaps reinforcing) the impact of the surname. If a surname has a dictionary meaning (that is, it also functions as a word), it is treated like any other trademark. For example, King and Bird both have significance other than as family names.
Whether registered or not, if a name mark has become well known, even a person with the same name may not be able to use that name as a mark. Courts do, however, sometimes permit two conflicting uses of the same surname with modifications to try to minimize consumer confusion. For instance, if McGuffy's bar faces a crosstown competitor by the same name, the second McGuffy may be forced to use a modifier, such as McGuffy's Cross-Town Bar.
A person who obviously tries to capitalize on his own name to take advantage of an identical famous mark (for example, Fred Ford opens Ford's Muffler Service) can be forced to give up all use of that name.
Learn more about Trademark Law.