1211.01(b)    Surname Combined with Additional Matter

Often a mark will be comprised of a word that, standing by itself, would be primarily merely a surname, coupled with additional matter (e.g., letters, words, or designs). The question remains whether the mark sought to be registered as a whole would be perceived by the public primarily merely as a surname. In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). The determination involves assessing the distinctiveness of the additional matter and whether its addition to the surname alters the primary significance of the mark as a whole to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1415 (Fed. Cir. 2017). See TMEP §§1211.01(b)(i)–1211.01(b)(viii) for additional information about surnames combined with additional matter.

1211.01(b)(i)    Double Surnames

A combination of two surnames is not primarily merely a surname, within the meaning of §2(e)(4), unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname. See In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 873, 152 USPQ 563, 566 (C.C.P.A. 1967) (holding SCHAUB-LORENZ not primarily merely a surname, the Court noting that there was no evidence submitted that the mark sought to be registered was primarily merely a surname; that the only evidence of surname significance related to the individual "SCHAUB" and "LORENZ" portions of the mark; and that the mark must be considered in its entirety rather than dissected).

1211.01(b)(ii)    Stylization or Design Elements

A mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995) (finding stylized display of term BENTHIN to be a factor weighing against a finding that the term would be perceived as primarily merely a surname). However, the addition of a nondistinctive design element or stylization to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. The primary significance of the mark, in its entirety, would be merely that of a surname. See In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite the stylization of the lettering, which was considered "insignificant, in that it is clearly not so distinctive as to create any separate commercial impression in the minds of purchasers of appellant’s services").

The display of a term in lower-case lettering does not detract from its surname significance. In re Directional Mktg. Corp., 204 USPQ 675, 677 (TTAB 1979) .

1211.01(b)(iii)    Surname Combined with Initials

In all cases involving a surname preceded by one or more initials, the factual record "matters most" when making findings regarding consumer perception. In re Colors in Optics, 2020 USPQ2d 53784, at *3 (TTAB 2020). A mark that consists of two or more initials preceding a surname will typically convey the commercial impression of a personal name and thus generally will not be primarily merely a surname. In re P.J. Fitzpatrick, 95 USPQ2d 1412, 1414 (TTAB 2010) (holding that the initials P.J. coupled with the surname Fitzpatrick would be perceived as a given name and comprised a personal name, not primarily merely a surname); see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) (holding J.J. YELEY would be perceived as referencing a particular person, not primarily merely a surname, because J.J. Yeley was recognized as the full name of a well-known NASCAR race driver); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (holding the primary significance of M.C. ESCHER was that of a famous deceased Dutch artist, commenting that "[t]he mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.").

Marks consisting of a single initial preceding a surname have been held to be primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 206, 98 USPQ 265, 267 (C.C.P.A. 1953); In re Colors in Optics, Ltd., 2020 USPQ2d 53784, at *4. However, the Board has noted that there is no per se rule that a single initial preceding a surname must be deemed primarily merely a surname. See In re Colors in Optics, 2020 USPQ2d 53784, at *4 (quoting In re Yeley, 85 USPQ2d at 1154). For example, a surname preceded by one initial may not be perceived as primarily merely a surname where the record shows that the addition of a single initial to a surname creates the commercial impression of a personal name. See In re P.J. Fitzpatrick, 95 USPQ2d at 1413 (discussing In re I. Lewis Cigar, 205 F.2d at 206, 98 USPQ at 267). Thus, applicants may attempt to overcome a surname refusal as to a mark consisting of a single initial preceding a surname by submitting evidence that the mark would be perceived as a personal name by the relevant consumers. See In re Colors in Optics, 2020 USPQ2d 53784, at *2-3. An applicant could show that such a mark is the name of a particular individual, such as the applicant or a signatory of the applicant, and provide evidence showing it would be recognized as such by the consuming public. See id. (holding J HUTTON primarily merely a surname rather than a personal name where no evidence was submitted to show Jade Hutton, an individual associated with applicant, went by or was known by J. Hutton and how the term was used, and she had signed a written consent Jade Hutton rather than J. Hutton). An applicant, however, must provide evidence that the mark would be perceived as a personal name by the relevant consumers, not argument alone. Id. at *4 (citing In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2007 (TTAB 2014)).

If the applicant indicates that the name in the mark is that of a particular living individual, the applicant must provide written consent to register the mark from this individual. See TMEP §§813, 813.01(a), 1206.04(a). If the name in the mark is identical to the name of the applicant or to a signer of the application (e.g., the mark is A. JONES and the applicant’s name or signatory is A. Jones), written consent is not necessary. In such cases, consent is presumed, but the examining attorney must ensure that a consent statement is entered into the Trademark database. See TMEP §§813, 813.01(a), 1206.04(b).

1211.01(b)(iv)    Surname Combined with Title

A title, such as "Mr.," "Mrs.," "Mlle.," "Dr.," or "MD," does not diminish the surname significance of a term; rather, it may enhance the surname significance of a term. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) (affirming Board decision holding that DR. RATH was primarily merely a surname); In re Giger, 78 USPQ2d 1405 (TTAB 2006) (holding GIGER MD primarily merely a surname); In re Revillon, 154 USPQ 494 (TTAB 1967) (holding MLLE. REVILLON primarily merely a surname); cf. In re Hilton Hotels Corp., 166 USPQ 216, 217 (TTAB 1970) (holding LADY HILTON not primarily merely a surname because it suggests a person or lady of nobility).

1211.01(b)(v)    Surname in Plural or Possessive Form

The surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form. See In re Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017) (noting that presenting BELUSHI in the possessive form "is consistent with perception of the term as a surname"); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481 (TTAB 2017) (noting that "the possessive form of the term AZEKA'S, as used in the proposed mark AZEKA'S RIBS, is consistent with perception of the term as a surname"); In re Binion, 93 USPQ2d 1531 (TTAB 2009) (holding BINION and BINION’S primarily merely a surname); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES for hotel and motel services primarily merely a surname); In re McDonald’s Corp., 230 USPQ 304, 306 (TTAB 1986) (holding MCDONALD’S primarily merely a surname based on a showing of surname significance of "McDonald," the Board noting that "it is clear that people use their surnames in possessive and plural forms to identify their businesses or trades"); In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984) (holding BURDONS primarily merely a surname based in part on telephone listings showing surname significance of "Burdon"); In re Directional Mktg. Corp., 204 USPQ 675 (TTAB 1979) (holding DRUMMONDS primarily merely a surname based on a showing of surname significance of "Drummond").

1211.01(b)(vi)    Surname Combined with Additional Wording

When a mark is comprised of a term that, standing by itself, is primarily merely a surname, combined with additional wording, the distinctiveness of the additional wording is relevant to determining whether the primary significance of the mark as a whole is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1380-81, 123 USPQ2d 1411, 1415 (Fed. Cir. 2017). The inquiry is not limited only to the question of whether the additional matter is capable of functioning as a mark. Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1482 n.9 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492-93 (Fed. Cir. 1988)). The additional term(s) must be evaluated to determine whether they are generic or merely descriptive. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1380-81, 123 USPQ2d at 1415. In addition, the meaning of the mark as a whole must be assessed to determine whether adding the additional term to the surname alters the primary significance of the mark as a whole. Id. at 1381 (remanding to the Board to determine both whether the term COLLECTION in the mark EARNHARDT COLLECTION is merely descriptive and the primary significance of the mark as a whole to the purchasing public).

Merely descriptive terms that have not acquired distinctiveness do not have source-identifying significance and—like generic terms—when added to a surname will typically not alter the primary surname significance of the mark as a whole. In re Six Continents Ltd., 2022 USPQ2d 135, at *26-28, *30 (TTAB 2022) (holding ATWELL SUITES for hotel and other related services primarily merely a surname); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477 at n.9 (holding AZEKA’S RIBS for barbecue sauce primarily merely a surname). See TMEP §1209.01(b) regarding merely descriptive marks and TMEP §1209.01(c) regarding generic terms. If the policy were otherwise, one could evade Trademark Act §2(e)(4) by the easy expedient of adding merely descriptive matter or the generic name of the goods or services to a word that is primarily merely a surname. See In re Weiss Watch Co., 123 USPQ2d 1200 (TTAB 2017) (holding WEISS WATCH COMPANY for clocks, watches, and related goods primarily merely a surname); In re Integrated Embedded, 120 USPQ2d 1504 (holding BARR GROUP for training, engineering, and expert witness services in the field of computer hardware and software primarily merely a surname); Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615 (TTAB 2013) (holding MILLER LAW GROUP for legal services primarily merely a surname); In re Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993) (holding HAMILTON PHARMACEUTICALS for pharmaceutical products primarily merely a surname); In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a surname where "‘brasserie’ is a generic term for applicant’s restaurant services"); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES for hotel and motel services primarily merely a surname); In re Possis Med., Inc., 230 USPQ 72, 73 (TTAB 1986) (holding POSSIS PERFUSION CUP primarily merely a surname, the Board finding that "[a]pplicant’s argument that PERFUSION CUP is not a generic name for its goods . . . is contradicted by the evidence the Examining Attorney has pointed to"); In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (holding LIQUORE MARTINONI (stylized) for liqueur primarily merely a surname, with "liquore" being the Italian word for "liqueur").

If the structure of the mark is "surname + additional wording" and none of the additional wording is inherently distinctive or has acquired distinctiveness, refusal of the entire mark under §2(e)(4) will be appropriate in most circumstances. Note that when the wording following the surname is geographic in nature, the wording should be assessed for whether standing alone it would be considered geographically descriptive or geographically deceptively misdescriptive of the applied-for goods or services. For example, if the geographic meaning of the additional term is obscure, then its addition to a surname would normally result in a combination that does not have the primary significance of a surname and the mark as a whole would not be considered to be primarily merely a surname under §2(e)(4).

If the wording combined with the surname is inherently distinctive (i.e., matter that is fanciful, arbitrary, or suggestive), the mark is not considered to be primarily merely a surname under §2(e)(4).

Some wording may enhance rather than diminish the surname significance of the mark. See In re Piano Factory Grp. Inc., 85 USPQ2d 1522, 1527 (TTAB 2006) (finding the addition of "& SONS" to the surname VOSE "serves only to emphasize or reinforce that ‘VOSE’ is the surname of the sons’ parents."), and cases cited therein. See TMEP §1211.01(b)(iv) regarding surnames combined with titles, §1211.01(b)(iii) regarding surnames combined with initials, and §1211.01(b)(viii) regarding surnames combined with legal or familial business entity designations.

1211.01(b)(vii)    Surname Combined with Domain Name

A surname combined with a non-source-identifying top-level domain name (e.g., JOHNSON.COM) is primarily merely a surname under §2(e)(4). See TMEP §1215.03.

1211.01(b)(viii)    Surname Combined with Legal or Familial Entity Designation

The addition of wording that merely indicates the legal entity of an applicant, such as "Corporation," "Inc.," "Ltd.," "Company," or "Co.," or the family business structure of an applicant, such as "& Sons" or "Bros.," does not diminish the surname significance of a term that is otherwise primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (holding S. SEIDENBERG & CO’S. primarily merely a surname); In re Piano Factory Grp. Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname). In fact, adding the familial entity designation "& SONS" to a surname was found to emphasize or reinforce the surname significance of the mark. Piano Factory Grp. Inc., 85 USPQ2d at 1527.