What is a “Primarily Merely a Surname” refusal?

A “primarily merely a surname” refusal is a reason for denying a trademark application provided by the United States Patent and Trademark Office (USPTO) when the mark being applied for is primarily merely a surname. In other words, the USPTO may reject a trademark application if it believes the mark is primarily the surname of a living individual, or is the surname of a deceased individual that is the name of a particular living individual.

This type of refusal is based on the principle that trademarks should not be granted for terms that are too similar to personal names, as this could lead to confusion in the marketplace and dilute the strength of personal names. The USPTO will consider several factors when determining whether a mark is primarily merely a surname, including the distinctiveness of the surname and the commercial impression of the mark.

In order to overcome this type of refusal, the trademark applicant must prove that their mark has acquired distinctiveness, also known as secondary meaning, in the minds of consumers. This can be done through evidence such as length of time the mark has been in use, advertising and sales under the mark, and customer recognition and association of the mark with the applicant’s goods or services.

If the trademark applicant is unable to provide sufficient evidence of acquired distinctiveness, they may modify the mark to make it more distinctive or choose a different mark to apply for. They may also appeal the refusal, but this process can be lengthy and costly.

It is important to keep in mind that the USPTO’s primary concern is to prevent marks that are primarily merely a surname from monopolizing a surname and to ensure that marks are distinctive, so that consumers are not confused about the source of goods or services. As a result, overcoming a “primarily merely a surname” refusal can be challenging, but with the right evidence and strategy, it is possible.