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  • Writer's pictureTodd

Primarily Merely a Surname

You may get an Office Action for a mark that is Primarily Merely a Surname. What this means is that typically you can’t just register a last name, because it takes away the ability for others to use their own names. The following five factors are used to determine whether a mark is primarily merely a surname:

First, whether the surname is rare;

Second, whether anyone connected with applicant uses the term as a surname;

Third, whether the term has any recognized meaning other than as a surname;

Fourth, whether the term has the structure and pronunciation of a surname; and

Fifth, whether the term is sufficiently stylized to remove its primary significance from that of a surname.

Now that phone books don’t really exist anymore, you can use databases such as Lexis to search for surnames. Sometimes you might think a word is just an acronym, but the Examining Attorney says, “Hey look, there are 11,000 people with this surname!”

And you'll get a Primarily Merely a Surname Office Action.

What about McDonald’s you might be thinking? Well, if there is acquired distinctiveness due to use of the mark for goods and/or services for at least five years, it can be registered.

This should be a consideration if your proposed mark is also a surname, even if you don’t mean it that way.

Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, let’s work together on your trademark needs


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