1211.01   "Primarily Merely a Surname"

The legislative history of the Trademark Act of 1946 indicates that the word "primarily" was added to the existing statutory language "merely" with the intent to exclude registration of names such as "Johnson" or "Jones," but not registration of names such as "Cotton" or "King" which, while surnames, have a primary significance other than as a surname. See Sears, Roebuck & Co. v. Watson, 204 F.2d 32, 33-34, 96 USPQ 360, 362 (D.C. Cir. 1953); Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955).

The question of whether a term is primarily merely a surname depends on the primary, not the secondary, significance to the purchasing public. The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination:

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). Where the mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007).

If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. Yeley, 85 USPQ2d at 1151; Benthin, 37 USPQ2d at 1334.

1211.01(a)   Non-Surname Significance

Often a word will have a meaning or significance in addition to its significance as a surname. The examining attorney must determine the primary meaning of the term to the public.

1211.01(a)(i)   Ordinary Language Meaning

If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005) (holding FIORE not primarily merely a surname where it is also the Italian translation of the English word "flower" and the non-surname meaning is not obscure); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (holding the relatively rare surname HACKLER not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969) (holding BIRD not primarily merely a surname despite surname significance); In re Hunt Elecs. Co., 155 USPQ 606 (TTAB 1967) (holding HUNT not primarily merely a surname despite surname significance).

However, this does not mean that an applicant only has to uncover a non-surname meaning of a term to obviate a refusal under §2(e)(4). See In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987) (holding N. PIQUET (stylized) primarily merely a surname despite significance of the term "piquet" as "the name of a relatively obscure card game"). The mere existence of other non-surname meanings of a term does not preclude a finding that the term is primarily merely a surname. Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1621 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname for legal services despite other meanings of the term "miller"). "The question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods or services at issue, that non-surname significance is the mark's primary significance to the purchasing public." Id.; see In re Harris-Intertype Corp., 518 F.2d 629, 631, 186 USPQ 238, 239 (C.C.P.A. 1975).

1211.01(a)(ii)   Phonetic Equivalent of Term with Ordinary Language Meaning

A term may be primarily merely a surname even if it is the phonetic equivalent of a word that has an ordinary meaning (e.g., Byrne/burn; Knott/not or knot; Chappell/chapel). See In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite applicant’s argument that PICKETT is the phonetic equivalent of the word "picket"); cf. In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (holding CALISTO not primarily merely a surname, the Board characterizing the telephone directory evidence of surname significance as "minimal" and in noting the mythological significance of the name "Callisto," stating that it is common knowledge that there are variations in the rendering of mythological names transliterated from the Greek alphabet (distinguishing Pickett Hotel Co., 229 USPQ 760)). Similarly, the fact that a word that has surname significance is also a hybrid or derivative of another word having ordinary language meaning is insufficient to overcome the surname significance, unless the perception of non-surname significance would displace the primary surname impact of the word. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (holding DARTY primarily merely a surname despite applicant’s argument that the mark is a play on the word "dart"); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (holding PETRIN primarily merely a surname despite applicant’s argument that the mark represents an abbreviation of "petroleum" and "insulation").

1211.01(a)(iii)   Geographical Significance

A term with surname significance may not be primarily merely a surname if that term also has a well-known geographical meaning. In re Colt Indus. Operating Corp., 195 USPQ 75 (TTAB 1977) (holding FAIRBANKS not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance). However, the fact that a term is shown to have some minor significance as a geographical term will not dissipate its primary significance as a surname. In re Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993) (holding HAMILTON primarily merely a surname).

1211.01(a)(iv)   Historical Place or Person

A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331, 165 USPQ 459, 461 (S.D.N.Y. 1970) (holding DA VINCI not primarily merely a surname because it primarily connotes Leonardo Da Vinci); In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (holding SOUSA for fireworks and production of events and shows featuring pyrotechnics not primarily merely a surname, where the evidence showed present-day recognition and continuing fame of John Philip Sousa as a composer of patriotic music, and the applicant’s goods and services were of a nature that "would be associated by potential purchasers with patriotic events such as the Fourth of July, patriotic figures, and patriotic music"); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (finding the primary significance of M. C. ESCHER to be that of a famous deceased Dutch artist); cf. In re Pickett Hotel Co., 229 USPQ 760, 762 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite applicant’s evidence that PICKETT was the name of a famous Civil War general); In re Champion Int’l Corp., 229 USPQ 550, 551 (TTAB 1985) (holding McKINLEY primarily merely a surname despite being the name of a deceased president).

Evidence that an individual is famous in a particular field does not necessarily establish that he or she is a historical figure. In re Binion, 93 USPQ2d 1531 (TTAB 2009) (holding BINION and BINION’S primarily merely a surname; although there was evidence that applicant had played a significant role in the gaming industry in Las Vegas, his notoriety was not deemed so remarkable or so significant that he is a historical figure); In re Thermo LabSystems Inc., 85 USPQ2d 1285 (TTAB 2007) (holding WATSON primarily merely a surname). Furthermore, the Board has held that a surname that would be evocative of numerous individuals, rather than one particular historical individual, does not qualify as a historical name and is merely a surname of numerous individuals with varying degree of historical significance. Id. at 1290.

1211.01(a)(v)   Rare Surnames

The rarity of a surname is an important factor to be considered in determining whether a term is primarily merely a surname. In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1924 (TTAB 2007) (finding the extreme rarity of BAIK weighed against surname refusal); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995) (finding the fact that BENTHIN was a rare surname to be a factor weighing against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994) (finding SAVA not primarily merely a surname, where there was evidence that the term had other meaning, no evidence that the term was the surname of anyone connected with applicant, and the term’s use as a surname was very rare); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) (holding GARAN not primarily merely a surname). However, the fact that a surname is rare does not per se preclude a finding that a term is primarily merely a surname. Even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (holding DARTY primarily merely a surname); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (holding REBO primarily merely a surname); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986) (holding POSTEN primarily merely a surname). Regardless of the rarity of the surname, the test is whether the primary significance of the term to the purchasing public is that of a surname.

An issue to be considered in determining how rarely a term is used is the media attention or publicity accorded to public personalities who have the surname. A surname rarely appearing in birth records may nonetheless appear more routinely in news reports, so as to be broadly exposed to the general public. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).

1211.01(a)(vi)   "Look and Feel" of a Surname

Some names, by their very nature, have only surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (holding PIRELLI primarily merely a surname, the Board stated that "certain rare surnames look like surnames and certain rare surnames do not and ... ‘PIRELLI’ falls into the former category...."); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (holding PETRIN primarily merely a surname). Conversely, certain surnames are so rare that they do not even have the appearance of surnames. In such cases, even in the absence of non-surname significance, a reasonable application of the "primary significance to the purchasing public" test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56 USPQ2d 1220, 1222 (TTAB 2000) (finding HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1923 (TTAB 2007) (finding lack of other recognized meaning does not in itself imbue a mark with the "look and feel" of a surname).

1211.01(a)(vii)   Doctrine of Foreign Equivalents

In determining whether a term is primarily merely a surname, the examining attorney must consider whether the term has any meaning in a foreign language. This determination is made from the point of view of American buyers familiar with the foreign language. In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005) (holding FIORE – the Italian equivalent of "Flower" – not primarily merely a surname).

The doctrine of foreign equivalents is not an absolute rule, but merely a guideline, which should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009). To support a refusal under §2(e)(4), the record must show that the surname significance is the primary significance. See In re Picone, 221 USPQ 93, 95 (TTAB 1984) (finding evidence that "PICON" is the name of a town and a mountain in Spain and that "piccone" is an Italian word meaning "pick" or "pickax" insufficient to overcome a refusal on the ground that PICONE is primarily merely a surname).

In Fiore, the Board noted that applicant had produced evidence that Italian is a popular language in the United States, such that the meaning of the term would be recognized by a wide variety of people; that "Fiore" is "listed as the only translation of the common English word 'flower;'" that Italian is a major, modern language, not an obscure language; and that the non-surname meaning of the term in Italian is not obscure. The Board found that FIORE "is the type of term that potential customers would stop and translate," and that "there is no question of whether the term would be recognized in its current form as the Italian word for ‘Flower.’" 75 USPQ2d at 1569.

The fact that a term has no meaning in a foreign language may also be relevant to a determination of whether a term is primarily merely a surname. In holding that PIRELLI was primarily merely a surname, the Board noted that the term "has no ordinary meaning in the Italian language, as the Italian dictionary excerpt, made of record by the Examining Attorney, shows." In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988).

See TMEP §§809–809.03 for information regarding how to ascertain the meaning of non-English wording in a mark.

See also TMEP §§1207.01(b)(vi)–1207.01(b)(vi)(C), 1209.03(g), and 1210.10 regarding the doctrine of foreign equivalents.

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). 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

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 surname Fitzpatrick would be perceived as a given name and thus comprises an entire personal name, not merely a surname); see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) (holding that the proposed mark J.J. YELEY was recognized as the full name of the well known NASCAR race driver and as such was perceived as a reference to a particular person and not primarily merely a surname); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (finding that 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.").

Although marks consisting of a single initial preceding a surname have been held to be primarily merely a surname, In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953), the Board has noted that no per se rule exists that a single initial preceding a surname must be deemed primarily merely a surname. P.J. Fitzpatrick, 95 USPQ2d at 1413. The Board further opined that such a mark would 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. Id. Therefore, 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 likely be perceived as a personal name. For example, an applicant may provide evidence that consumers in general perceive a single initial preceding a surname as a personal name. Or, an applicant may show that such a mark is the name of an individual, such as the applicant or a signatory of the applicant, and evidence shows it would be recognized as such by the consuming public. In addition, 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). However, when the name in the mark is identical to the name of the applicant or of a signer of the application (e.g., the mark is A. JONES and the applicant’s name or signatory is A. Jones), 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), and 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 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 Wording

The treatment of marks that include wording in addition to a term that, standing by itself, is primarily merely a surname, depends on the significance of the non-surname wording.

If the wording combined with the surname is incapable of functioning as a mark (i.e., a generic name for the goods or services), the examining attorney must refuse registration on the ground that the entire mark is primarily merely a surname under §2(e)(4). If the policy were otherwise, one could evade §2(e)(4) by the easy expedient of adding the generic name of the goods or services to a word that is primarily merely a surname. See 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 wording combined with the surname is capable of functioning as a mark (i.e., matter that is arbitrary, suggestive, or merely descriptive of the goods or services), the mark is not considered to be primarily merely a surname under §2(e)(4). However, if the additional wording is merely descriptive or the equivalent, and a disclaimer is otherwise proper, the examining attorney must require a disclaimer of the additional wording. See In re Hutchinson Tech. Inc., 852 F.2d 552, 555, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988) (holding HUTCHINSON TECHNOLOGY for computer components not primarily merely a surname when the mark is considered as a whole, the Court remanding the case for entry of a disclaimer of "TECHNOLOGY" before publication).

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 also TMEP §1211.01(b)(iv) regarding surnames combined with titles, TMEP §1211.01(b)(iii) regarding surnames combined with initials, and TMEP §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.